JOHNSON BAILROAD SIGNAL CO. V. UNION SWITCH ·
SIGNAL 00.
85.
screwed upon the exterior of the overflow pipe, and slotted for thereceptlon of the pin, 17, and the lock nut, 16, at the lower end of the tubular .cap, P, substantially as and for the purposes set forth."
In our apprehension, we have here seyeral groups of devices, performing distinct functions without co-operative action. The particular means for attaching together the socket, G, and the stand pipe,E, are quite independent in operation and function of the devices for sustaining the overflow pipe when raised, namely, the pin, 17, and the communicating slots in the cap, P. So, too, the means by which the Bcrew attachment of the cap, P, to the overflow pipe is effected and kept secured by the lock nut, 16, are distinct from and independent of either of the other two groups of devices. Guided by the rulings in Pickering v. McCullough, 21 O. G. 73, 104 U. S. 310j Hendy v. Iron Works, 43 O. G. 1117, 127 U. S. 370, 8 Sup. Ct. Rep. 1275; Royer v. Roth, 49 O. G. 1987, 132 U. S. 201, 10 Sup. Ct. Rep. 58; SetfN CO. V,, Keith, 55 O. G. 285, U. S. 530, 11 Sup. Ct. Rep. 621, and other cases,-we reach the conclusion that this claim is for a mere aggregation of parts, and not a patentable combination; but, if a different view of this claim were allowable, and patentable novelty were conceded, still no infringement of the combination is shown, for the defendant does not employ the inwardly projecting pin, 17, and the slots in lar cap, P,but means substantially different. It may be added that if Carr's invention was not a primary one, much less was Demarest's, and therefore the principleof the cases of Railway Co. v. Sayles, supra, and Bragg v. F'Uch, supra, has here full application. ' . We are of the opinion that the plaintiff's case fails all to both the patents sued on. Let a decree be drawn dismissing the bill of COmplaint, with costs. . , BUFFINGTON,
District Judge, concurs.
10HNSON RUT,ROAD. SIGNAL
Co.
tI. UNION SWITCH
&:
SIGNAL
Cb.
(otrcuit Oourt, W D. Pennsylvwnia. April 11, 1892.)
No. 18.
1.
PATBNTS FOB INl'iBNTIONS-ASSIGNMBNT AND LIClIlNSB-POWBR OF A'M'Oll'NET. '
C., the owner ot letters patent, by a power ot attorney appointed Y, his "sole agent" for the of working and developing the,husinessof the said patents, " for and in consideration of a specified royalty "upon e'Vary lever fitted' upon any railway in the United States, "etc., to be paid by Y. to C., "with power 'for'the' said Y. to the sale 01 said patents upon terms to be agreed npon. n, Held;, that the power. tpns conferred did no.t warrant Y. in making an abeolute ll8.1e ot ' the patents· without the concurrence ofC. .., . .
.I. SAMB. ' By an instruDlent of writing executed by Y·.in his own name, and.all his.ownaci and deed, withou1: the consent or k,nowle,dge, of nor his subseqnent ll.Clluleseence, Y. granted toacorpQratioJl,· its successorS. anaMSigns, "the. sole; andexplualve '
,86
'FEDERAL REPGRTiER,
vol. 51.
rlgbt.&nd said l'6oited patents to make, use, and sell the improvetherein and olaimed, or intended so to tie, to the fqU ends of tbe re'8pective terms of sai.Cl "with a proviso tbat the grantee, J" the said royalty. HeW, that this 'was an attempted sale byY. of tbe and; beIng1JnautlJ,orized by hlspOwer of was inoperative to pass the title thereto , subsequent grantee of C. .
InEquity. On motion by cross complainant for injunction. Fotformerreport,see43 Fed. Rep. 331. S.'· for the motion. " Georgt/W. Miller, opposed.
Denied.
Circuit JUdge. This case is now before the court upon the motion o(the Union & Signal Company, the plaiI"\tiff in the cross for ll. prelimin3ry ,illjunction against the Johnson Railroad Signal COmpAny, the elefendan'tin the cross bill. This branch of the case turns of titl.e. Both parties claim titleto.the letters patent involvedik:\ this controversy underF'rederick Cheeswrignt, assignee of William. R. Sykes. By letter ·of aW>rney dated September 10, 1881. underbis hand and seal, Cheeswright appointed D. M. his "sole agent I' 10rthe United States" for the purpose of workdeveloping the business of the saId. patents" therein, ., for and of a to be well and truly made by the said D. M.Yeomil.l1s to. me, the said Frederick Cheesw.right, my heirs, executors, aJ:i4 assigns, as royalty, of four pou nds per lever, British money, for every le"er fitted upon any railway in the United States,. to, which Sykes'system .of signaling may be attached or connected, witp..pow.er for the said D. M. Y to negotiate the sale of the said paterltli, llpon terms to be agreed upon." The Union Switch & Signal Company acquired its title by an instrument in writing elated March 21, -1882, and executed under seal by the said D. M. Yeomans, not in the name or as the act and deell of his principal, Cheeswright, but in his own name, and as his own act and deed, and signed with his own name, without more. This pnper,after reciting the letter of attorney from Cheeswright of September 10, 1881, proceeu& thus: "Nq)V, incam'illg out and accomplishing the purposes of the sahl agency, the shih Dad. Yeomans, for and in cllJ1sid..ration of one dOllar to him in hand paid, and of to he paid as hl-'I'einaftel' st't forth, has g.ven and grant..d, and does hel'ebygive and I!l'ant. to the said the Union Switch & Signal Company, its successors and assigns, the sole and exc(usil'e right and licens.., under said recited patents, to milke, lise, and sell thl' improvl'ments thert'in d"sl'ribed and claimed, or iutenue,j so to be, to the full ends of the respect!ve terms of· said 'pruvidt'd -that and by theacc£ll'tance hereof the said Iicenseeagl'eetl Will trUly pay to the said Yeomans .. terms, .llnd to his heirs, execlltol'S, adminisroyalty, four p!I\Jnds per lever. British mouey, for in the United States to which Sykes' every lever fitted by systl-'m ofsignaling maY'be attached..Witnl'!SS the hl'od and seal of tho said D. M. Yeomans." Railroad Signal Company was acquired under a power of attorney from Cheeswright to Henry Bezer, dated Octo-
JOHNSON RAILROAD SIGNAL CO.
''!I. 'UNION SWITCH
&: SIGNAL CO.
87
ber 31, 1889, and an absolute assignment of the letters patent, in due form, dated December 17, 1889,.executed by Bezer as attorney in fact of Cheeswright. Nothing appears on the face of the papers or otherwise to show that Cheeswright assented to or ratified the instrument of March 21, 1882, executed by Yeomans, or that he acquiesced therein after knowledge; hence the question of title, as it is now presented, depends altogether upon the papers themselves. The title set up by the Unior. Switch & Signal Company is prior in date, but its validity is denied. It is not to be doubted that an instrument of writing, whereoy the owner of a patent grants to a corporation, its successors and assigns, the sole and exclusive right and license to make, use, and sell the patented invention during the term of the patent, passes the whole monopoly, and vests in the assignee the title to the patent. Nellis v.Insurance Ce., 13 Fed. Rep. 451; Pickhardt v. Packard, 22 Fed. Rep. 532. It is, in effect, .a sale of the entire patent. Now, such was the character of the instrumentwhich Yeomans executed to the Union Switch & Signal Company. Had he authority, under his power of attorney, to make an assignment? I think it clear that he had not. He was appointed the" sole agent" of Cheeswright in the United States "for the purpose of working and devel-oping the business of said patents." Within what precise limits he was confined in executing the designated purpose we need not inquire now. Certain it is that the sale of the patents was not within the scope of the agency as thus declared, for we find that such a sale was expressly provided for in the subsequent clause, "with power for the said D. M. Yeomans to negotiate the sale of the said patents, upon terms to be agreed upon." Indisputably the power thus conferred upon Yeomans to negotiate a sale of the patents did not warrant an absolute sale by him without the concurrence of Cheeswright. Yeomans might negotiate the terms of a proposed sale, but no sale could be consummated until the terms were accepted by Cheeswright. But Cheeswright was not a party to the assignment of March 21, 1882, nor does it appear that he' ever consented to the terms thereof. Therefore, as an attempted sale of the letters patent, it was the unauthorized act of Yeomans, and inoperative .to pass the title. It is, indeed, contended that, so long as Yeomans disposed of the letters patent upon the reserved royalty specified, he was at liberty to act as he did, and that the consent of Cheeswright was necessary only in the event of a transfer of the letters patent for a gross sum. But the intention to make such distinction is not ex_pressed in the power of attorney, nor inferable from the language used. Whatever the terms of sale might be, the consent thereto of Cheeswright was essential to validate the transfer. As this conclusion is fatal to the present motion, I refrain from any further expression of opinion. Whether the instrument of March 21, 1882, is available to the Ullion Switch & Signal Company for any purpose oughtnot to be considered until the final hearing of the whole case. The.motion for an injunctionis denied.
88
nDERAL REl'ORTER,
BARNES AUTOMATIC SPRINKLER CO.
tI.WALWORTH June
MANUF'G CO.
et aZ.
(Circuit Court. N. D. lUinois.
8, 1892.)
P,lTE,NTS POB INVENTIONS-NOVELTY-AUTOMATIO FIBE EXTINGUISHER·
. " ,. The third, fourth, and fifth claims of letters 'patent No. 233,893, issued October . 19, 18RO, to Charles Barnes for an autoniatic fire extinguisher, which claims are for a vQ\ve-releasing device, oonsisting of wires, a lever, and a fusibly jointed slide, and. the oombination ofa{lerforated distributer, a valve located in the distributer, having a stem which proJects through the shell of tQ.e distributer, and a lever to hold .the valve to its seat" are voil for want of novelty.
In Equity. Bill by the Barnes Automatic Sprinkler lJompany agaillst the Walworth Manufachiring Company and others for an injunction and an accounting. West &:- Bond, for complainant. James J.Myers, for defendants. BJ.pDGETT, District Judge. In this Qase the complainant seeks an injunction and accounting by reason of the alleged infringement of patent No. 233,393, granted October 19, 1880, to Charler Barnes for an llautomaticfire extingu.isher." The patent in question concerns that class of which are intended to extinguish incipient fires. by uutomatic means, whereby any unusual heat releases the water and puts the device in action. This is by no means a foundation patent. but is, and only purports to be, an improvement upon' prior devices ofthe same class. The inventor says in his specifications: "The object of this invention is to provide a supply valve, which will be more easily and securely forced and held to its seat, and more readily released therefrom. " . ".A further object is to relieve the valve-sustaining device from the strain consequent upon the expansion and contraction of the valve closing aDd releasing wires under varying temperatures. " ...Another object.is to relieve the fusible solder joints from strai n, so that they may be made more sensitive to heat without liability of parting except in case of .pre. " ..Its object is, finally, to provide a means to hold the valve seated within the distributer securely to its seat, without liability of fracturing the solder joint by. which it is held, by expanSion and contraction of the metal." The patent contains seven claims, but infringement is charged only as to the third, fourth, fifth, and sixth, which are: .. (3) A valve-releasing. 'device for automatic fire extinguishers, consisting of wires. C, lever, H, and fusibly jointed slide, I, combined to operate SUbstantiallyas set forth. (4) In an automatic fire extinguisher, the combination, substantially as set forth, of a perforated distributer, a valve located within said·(Iistributer, and having a stem which projects through the shell of the distributer, and a lever, as K I, to hold the valve to its seat within the llistributer until its fusible joint. K 8, is released by heat. (5) In an automath: fire extinguisher, the combination, substantially as specified, of a perforated distributer, provided with a valve, the stem of which projects through the distributer shell, with a jointed lever, K 1, and latch K2, said latch resting upon a projection on shell of the distributer, and securell thereto by