Robertson v. Hill

SHEPLEY, Circuit Judge. This is a motion for a preliminary injunction. In this case, the patent has frequently been made the subject of legal investigation. The validity of the patent has been established and confirmed in at least three cases, and under such circumstances, on a motion for a preliminary injunction, the court very seldom hears any evidence, except on the question of infringement. Under such circumstances, the party, by the established rules of equity, is entitled, as a matter of course, to the preliminary injunction without a trial at law and without further trial of the cause, especially in a case like this, where the party defendant in the cause was interested in the defense of the suit, and had full opportunity to test the question. Ordinarily, therefore, in such a case, the court, on a motion for a preliminary injunction, considers only the question of infringement, and that is the established rule of the court. In this case, however, the court has considered, with as much care as the time would allow, one question which has been raised by the counsel for the defendant, and which may properly be considered under the question of infringement. It is contended by the defendant that when a party has patented a combination, and that combination turns out to be useless, of no practical utility, and another party adds to that combination another element, and thereby makes the whole practically useful where there was no utility before, the party who thus adds another element to the combination, which was necessary to make the prior combination of any practical utility, is not an infringer, and that he is not entitled merely to use his improvements, requiring first a license to use the former combination, but that he may use the whole of it; and that view of the law is undoubtedly correct. In that view of the law, it is contended that there is no infringement in this case, and it is with a view to the question of infringement only that the court has considered it. not deeming it necessary to go into any consideration of,the question of novelty, or entertain or express any opinion on that question until the final hearing of the cause. But considering that the right of the party depends upon the validity of the patent, and the fact that that question has been adjudicated so many times, it is not the intention of the court, in any case, upon a motion for a preliminary injunction, to express any further opinion upon the questions involved in the case, except such as are absolutely necessary to the decision of the question of infringement on the motion for a preliminary injunction. But on an examination of the patent, the court, while it believes that view of the law to be correct, can not conceive it to be applicable to the present case. It is contended by the defendant in this ease that the combination of the plaintiff, which was the combination of a handle and a series of printing-wheels, or their equivalents, for printing dates with a fixed type form or printing-die for dating purposes, substantially as described, had no practical utility, because without the inking ribbon or device which the defendant has added, it was of no practical use; that the wheels would clog by the ink; and it was of no practical use, and did not come into use, until the ribbon as an inking device was added to it by the defendant. But it does not appear that Robertson, the patentee, here, has stated in his patent any combination with any inking device, but has stated that his combination could be used with any suitable inking device. An inking device formed' no part of his combination, but it. could be used, he says, with any suitable inking device. Now, the testimony in the case shows very clearly that the ribbon was an inking device, which was known prior to the date of this patenv— was known and in use, and described in patents prior to the date of this patent It was, [946] therefore, one of the inking devices which the complainant had a right to use, and which he is to be considered, in the eye of the law. as having referred to as a suitable inking device in his patent. Therefore, although it should be proved to be true, that if the plaintiff’s combination were used with a common iukiug-pad, or by applying printer’s ink with rolléis in the usual way, it would so clog and interfere with the turning of '(lie wheels that it would not be a practically useful device; still lie was open to use the ribbon as a roller, which had been known and used as an inking device prior to the date of the patent. The conclusion of the court, therefore, is, that under the present state of the proof, in view of the prior decisions in the case, the injunction must go, as prayed for.