Johnson Railroad Signal Co. v. Union Switch & Signal Co.

BUTLER, District Judge. The only questions presented by the charge of infringement, which is based on alleged sales to the Boston & Albany Railroad Company, and an alleged' offer to sell to the Old Colony Railroad Company, of Massachusetts. We do not think either allegation is sustained by the proofs. assignments of error, requiring consideration, grow out of the As? respects the first, the facts are that the railroad company, first named, hawing acquired a right by license to make and use the signals on its lines, contracted with the appellant to make ami erect them for a stipulated compensation; and that the la tier did make and erect them accordingly. This was not a, violation ©£ the appellee's rights. The appellee, however, claims that it was, because the transaction, as if thinks, constituted a sale within the meaning and prohibition of the patent laws. A contract to make [488] and deliver specified articles for a given sum, is field under tfie statute of frauds not to constitute a sale, but simply an agreement for materials and labor. Mixer v. Howarth, 21 Pick. 205; Spencer v. Cone, 1 Metc. (Mass.) 283; Goddard v. Binney, 115 Mass. 450. It is unimportant fiere, fiowever, by wfiat name tfie transaction is designated. No injury resulted to tfie appellee. Tfie appellant did for tfie railroad company, at its instance, only wfiat tfie latter fiad a right to do under its license. Tfie suggestion tfiat it could not employ others to make tfie signals for its use, but must make them itself at its own shops, by its own workmen, is unwarranted by anything found in tfie license, or elsewhere. As it fiad a right to make them tfie appellee is not interested in tfie place or manner of its exercise. Nor is there any support for tfie suggestion tfiat tfie appellee is entitled to a profit on tfie manufacture. Tfie right to such profit- passed with tfie license, irrespective of tfie individual who might do tfie work. As regards tfie alleged threat, we find nothing in tfie proofs to sustain tfie allegation. It appears tfiat tfie Old Colony Railroad Company advertised for proposals to furnish, materials and do certain work on its line, which included furnishing and erecting these signals. Tfie appellant offered to do tfie work and furnish everything required except tfie signals; representing tfiat these could be obtained for about $500 additional. Tfie railroad company declined tfie offer thus made; and tfie appellant then proposed to furnish tfie signals for tfie additional sum .named. A day or two later, fiowever, it withdrew tfie proposal. There is nothing in this to justify a belief tfiat the appellant contemplated an infringement of tfie patent. Tfie only justifiable inference from its offer to furnish tfie signals is tfiat it intended to procure them from some one authorized to sell, or- by other lawful means. But in any view of tfie transaction it does not show such a threat, to infringe, when tfie bill was filed, as justifies an injunction. There is no evidence tfiat it fiad tfie signals on hand for sale, or contemplated having them. „ Tfie decree must, therefore, be reversed, with, directions to dismiss tfie bill.'