916
FEDERAL REPORTER.
.
that shMt metal barbs are cut so as to present more than two points when wound around the fence wire, or interlaced between the strands, make them any less an infringement of Glidden's device or relieve them of liability to Hunt. We, therefore, come to the conclusion that complainants have the right to the relief asked by their bills; the principles we have laid down, in our estimation, fully covering the con· troverted questions in all the cases before us. Decrees may be prepared finding that defendants infringe, and referring the cases to the master to take account of damages and profits. Blodgett, D. J., concurred.
WmTE and others v. LEE. {Circuit Court, D. Massachusetts. December 30, ISSO} J.., LICENSEE-PLEA IN BA:R.-A
licensee cannot, by plea in bar,;mise such· issues as are usually made. in alliJwer to a suit for. the infringe. ment of the patent.
In Eq:uity. Maynadier; for complaimtnts. George L. Roberts d; Bros., for defendant. LdWELL, C. J. In this case I decided that the bill, upon its face, Was wanting in equity; because it undertook to treat a licenElea as an infringer, without showing a renunciation of the license. White v. Lee, 3 FED. REP. 222. The complainants have now amended their bill, and charge that the. defendant has not .furnished the statements and made the payments agreed upon between them, and praying that the defendant may be required to account for all shoes which he has ma<i.; containing the patented improvements, or' any material part thereof. Only one of the two patents mentioned in tlie lease, or license, is in controversy in this suit. The defendant pleads in bar, admitting that he took a license; or "lease," under the original patent, No. 190,655, but alleging that the re-issue, No. 8,536, now sued on) was issued without his knowledge or consent; that by the terms
·
WHITE. V. LEE.
917
of hisli4ense it mutually agreed that, in case of re-isfille, the grant of license should be good thereunder, and ,the Jltipulations a,nd agreements of the respective parties should ,be binding npon them in the same manner, aud to the, same extent, as though such re-issue had. never ,been obtained; that the patented improvement which he was licensed to use was that recited and referred to in the claim of the original patent, which he sets out in hcec verba; that whatever may be the scope of the claims of the re-issue, No. 8,536, he is not answerable thereto, so far as they may be construed for subject-matter different from that embraced in the original claim, but that he has the same rights and is subject to the same obligations as if the re-issue had not been obtained; that he has never failed to keep any of his agreements contained in the lease, but has always kept them. This is set out in detail. Xhe question intended to be raised by this plea is whether the ,defendant is bound to account and pay for any shoes' which would. be an infringement of the claims of the re-issue, but would not infringe the single claim of the original patent.' The la,uguage of the license is acourately set out in the plea;, as far as it .goes, but some other clauses, may be useful in constrmng the instrument. The granting part, after referring to thetw<i·patents, gives the right to manufacture at the defendant's factory, in Athol, in the state of Massachusetts, and in no other place, during the term ·of said letters patent, and during any' renewal or extension thereof, shoes contaiIJing the said pate:nted improvements, or either of them, or any material or substantial part thereof. Then follow the stipulations for royalties, keeping accounts, eto. In the fifth stipulation, on the part of the defendant, he agrees not to contest the validity of the patents, or of any re-issue or renewal thereof, nor the sufficiency of the specifications, "or the validity of the licensor's title, nor the fact of his infringement in the manufaJture and sale of said shoes." Thus far it seems to be the natural construction of the lease that if the defendant should be sued' for rOJalties, after a re-issue, he must admit its 'mlid-
918
PEDERAL REPORTER.
ity, and the sufficiency of its specification, and that if he has made "said shoes"-that is, shoes embodying the patented invention, or any substantial and material part thereof-he cannot deny infringement. This last seems a contradictory and insensible stipulation, for the very question of infringement depends upon whether the defendant has made "said shoes." That, however, is not the question at present. Afterwards, there is the ,mutual stipulation, also numbered 5, quoted in the plea, that in case of re-issue the grant shall remain good, and the stipulations of the parties shall be binding upon them in the same manner and to the same extent as if the re-issue had never been obtained. The defendant contends that, although he is liable to pay royalties under the re-issue, it is only to the same extent and in the same cases, in all respects, as if the single claim of the original patent were the only claim of the re-issued patent. My impressionis that the fifth mutual agreement means that the parties are to remain bound under the re-issue sub· stantially as if that had been the original patent. The idea, if that be it, is awkwardly expressed. Instead of saying, as if the re-issue had never been obtained, it should be, as if it had never been necessary to obtain it. But it seems very improbable that the parties should import into a re-issue So claim which is cancelled a.nd of no effect, and, indeed, which has no existence except by their stipUlation. The re-issue is presumed to be for the same invention. If not, it is void. Perhaps the defendant may be estopped to say it is void; but, as he is bound only for "said shoes," he may, perhaps, be permitted to show that the shoes he is asked to account for do not embody the invent.ion, though he cannot say that the re-issue. does not. This will depend upon the construction of his fifth agreement. If the re-issue should turn out to be for the same invention, I doubt very much whether the defendant will escape payment if he has used that invention, though it may have batm imperfectly claimed at first. In other words, I doubt if) the stipull),tion refers to the claim of the patent as necessarily and without possible amendment embodying the
WHITE V. LEE.
919
whole invention. But, whatever may be the meaning of the stipulations in question; the defendant should. answer the bill. The plea does not bring the case to a 'single decisive point. It raises the issues usually made in the answer to a pat'ent suit, namely: upon the true construction of the re-issue, and of the license, and of the original patent; and, upon examination of what th,e defendaut has done, to what extent has he infringed, not technically infringed, but made the patented thing, which, were it not for the license, would be an infringement, and which, under the license, gives the plaintiffs a claim for royalty? The patents are not, as yet, in the record, and I. do not see how the issues can be intelligently decided without them. Stated in another way, the difficulty is that the plea admits a. liability to account, but furnishes no account, nor the materials for making one. It is not an accounting in equity to say that you have accounted, unless there has been a stated account, which is not the averment here. The defend· ant was to keep accounts and rendex statements, and was to put upon each pair of shoes stamps of a certain, sort. He says he has done all this; but he ought to say it byway of answer, that the plaintiffs may have the discovery they seek, and that the case may take the usual course and go to a master, if necessary, to have the account properly made up. The points raised in the plea will be equally available to .the defendant in answer. Case to stand for
920 MURPHY
and others v.
SCHOONER MARY S. HONTVET.
,District Court, lJ. De1JJ Hampshirs.
December 21, 1880.)
1.
SALVAGE-VALUE Oil' VrilBSEL-METHOD OF
In Admiralty. Mr. Hatch, for Murphy and other libellants" Mr. Batchelder, for Gilson and Campbell. ' Mr. Page and Fmnk Goodwin, for claimants. CLARK, D. J. The schooner Mary S. Hontvet, of about 72 tons burden, early in the morning of August 21, 1880, starting on a fishing voyage from Portsmouth harbor to the Western banks, got upon the rocks at "Pull-and-be-damned point" in the l·iver. Her owners, upon being informed of her position, went, some of them, to her assistance. While they were attempting to relieve her with the steam-tug Bateman, she slid off the rocks into deep water and began to sink. She had on board 100 hogsheads of salt. The owners then went for another tug and attempted to tow the vessel to Newcastle, but could not do so, and she sank in the river with only her mast-heads out of water. In the afternoon of the same day she began to float, and to drift with the tiae towards the ocean. The owners were aware of this, but made no effort, with the Bateman or otherwise, to hold her, or to bring her to shore. Late in the afternoon of the same day Murphy, one of the libellants, having in charge a small schooner, called the Little Kate, which Mr. Tredick, one of the claimants, owned, proposed to Mr. Tredick to go with him in quest of the Hontvet. This Mr. Tredick declined to do. Murphy, however, taking with him Mr. White, another libellant, went to search after the abandoned vessel with the Little Kate. They found her about half way between "Whale's-back" and the shoals, some three and a half miles at sea. She was on her side, rolling in the seawaYr with her masts rising and falling, and theses. mak· ing a breach over her. There was a thick fog, with the wind to the south-east, some "chop," but not a heavy sea. After sailing round the Hontvet two or three times to find a place