Warren Bros. v. City of Montgomery

JONES, District Judge (after stating the facts as above). This patent has been sustained by the Circuit Court of Appeals for the Sixth Circuit in Warren Bros. Co. v. City of Owosso, 166 Fed. 309. Warren Bros. Company, the complainant in that suit, sought an injunction to prevent the infringement of the same patent in the Circuit Court of the United States for the Eastern District of Illinois, in which tile Metropolitan Engineering & Construction Company intervened. In that case a preliminary injunction was refused. No opinion was rendered, and there is no statement of the reasons in the order denying the preliminary injunction there. Afterwards Warren Bros. Company — 420 — brought their suit in the Circuit Court of the United States for the Middle District of Alabama against the Metropolitan Engineering & Construction Company to prevent infringement, of the same patent in the construction of a block of pavement on East Jeff Davis avenue, in the city of Montgomery. It is insisted, as these last two suits present the same issues regarding the same patent, and the complainant and the main defendant in both cases are the same, that the Circuit Court in Alabama should follow the Circuit Court in Illinois and refuse a preliminary injunction. This insistence carries the doctrine of comity quite too far under the circumstances. It ignores altogether the comity due to the Circuit Court of Appeals of another circuit, which has rendered a final decision on the merits, and would exact more consideration for the mere refusal of the Circuit Court to grant a preliminary injunction, which does not necessarily decide anything on the merits, than for the decision of the Circuit Court of Appeals upholding the validity of the patent. If the ruling of the Illinois Circuit Court had been a final judgment adverse to complainant, still, with a final judgment the other way in the Circuit Court of Appeals in another circuit, this court would necessarily be compelled to exercise its own independent judgment in passing upon this motion. Here, however, the only judgment which has been rendered on the merits upholds the validity of the patent. It is true the defendants here were not parties or privies to the1 litigation with the city of Owosso. It is a familiar rule, however, that: “Certain matters regarding the validity of a patent are governed by established rules of legal definition and construction, and their determination is the same in every case, without reference to the parties, and sometimes without reference to the testimony. Whether or not the patented invention has resulted from inventive skill, or whether it is embraced in either of the classes protected by statute, whether the patent is formally sufficient, and what it claims as to the invention patented, are points which, once being carefully considered, may be regarded as permanently settled for the purposes of future litigation.’’ While in these matters judges are not bound to follow the decisions of tribunals of inferior or co-ordinate jurisdiction, the judicial comity which must always prevail in courts representing the same government and administering the same laws requires that judgments upon points like these should not be departed from without grave reasons for declaring them erroneous. American-Nicholson Pavement Co. v. City of Elizabeth, 4 Fish. Pat. Cas. 189, Fed. Cas. No. 312; Page v. Holmes Burglar Alarm Telegraph Co. (C. C.) 2 Fed. 330; Lockwood v. Faber (C. C.) 27 Fed. 63. The uniform course of decisions in the courts of the United States as to previous decisions rendered by a Circuit Court with regard to the validity of a patent has been to treat it as of the very highest nature, and as almost conclusive on an application for an injunction in another' case founded on the same, patent. American Middlings Purifier Co. v. Christian, 4 Dill. 448; Fed. Cas. No. 307; Hammerschlag v. Garrett (C. C.) 9 Fed. 43. Save in cases where a prior decision operates as an estoppel upon the defendant, on an application for an injunction, all the issues are open to fresh inquiry and determination; the judgments being merely — 421 — evidence in favor of the plaintiff, and controlling the decision of the court only when not opposed by more convincing proof. When conflicting judgments have been rendered, the courts must follow those which, in view of all the tests of authority, appear to have the greater value, and if the question is still doubtful, and no other evidence is offered, it must decide in favor of the patent. United States Stamping Co. v. King (C. C.) 7 Fed. 860, 17 Blatchf. 55. When there has been an adjudication upholding the validity of the patent, the defendant in another case, who seeks to overthrow it because of new evidence not introduced in the former case, which should have led to a different result, must make good his contention. When the defense is anticipation, it must be shown; and, if there be any reasonable doubt on that point, it must be resolved against the defendant, on a motion for a preliminary injunction. Cantrell v. Wallick, 117 U. S. 689, 6 Sup. Ct. 970, 29 L. Ed. 1017; Bursh v. Condit, 132 U. S. 39, 10 Sup. Ct. 1, 32 L. Ed. 251; Coffin v. Ogden, 18 Wall. 120, 21 L. Ed. 821. In view of these principles, and after careful consideration of the new evidence regarding the Washington pavement, which was not before the court in the Owosso litigation, but was before the Circuit Court of Illinois, this court holds that the defense of anticipation is not made out. The substance of the other defenses, leaving out the question of infringement vel non, is that the patent does not disclose invention, and that there has been double'patenting. On these points the court is of opinion that at this stage of the proceedings it should follow the decision in Warren Bros. v. Owosso, supra. While that decision does not discuss the question of double patenting, it inevitably overrules that defense. I find, from an examination of the defendant’s briefs before the Circuit Court of Appeals in that case, that the defense of double patenting was brought to the attention of the court and relied on. See Thompson-Houston Electric Co. v. Ohio Brass Co., 80 Fed. 712, 26 C. C. A. 107: Cleveland Foundry Co. v. Detroit Vapor Stove Co., 131 Fed. 853, 68 C. C. A. 233. In Warren Bros. Co. v. City of Owosso, supra, it is said, on page 312 of 166 Fed.: "Warren's Invention, shortly slated, consists in the discovery that an aggregate of large and small i>ieces of stone, together with a certain proportion of stone dust, all mixed together and thoroughly permeated with bitumen or asphalt, results, when set, In a compact, stable structure, and is less liable to disintegrate from traffic or weather than any other method of grading or arranging the mineral constituents. Under the evidence, the particles are more compact in their relation to each other, and there is a minimum of friction in their interaction. The larger pieces of stone withstand the tendency of the small grains or dust to slip by each other and change the form of the pavement by disintegration and lumpy spots. The result is, therefore, a stability due to the arrangement of tin; mineral structure which enables the use of a softer asphalt or bitumen than would be otherwise feasible, inasmuch as a greater proportion of the wear .and strain is carried by the mineral elements than by the binding constituent. This is, in substance, stated and claimed as an advantage over any other pavement composition by,the patentee in his specifications. The fundamental idea of Warren is, not that the ‘density’ of his composition gives the stability which he claims, but that the mineral aggregate should of itself resist displacement by (raffle. Neither is the utility or intrinsic value of the Warren patent seriously denied, though its superiority over the sheet asphalt, under ordinary conditions, is by no means conceded. — 422 — Aside' from any sort of concessions as to the utility and intrinsic value of the structure of the patent, its durability and practical value in use is established by a great volume of evidence coining from expert engineers acquainted with the pavement problem, as well from others who speak from observation of the pavement in use in many parts of the country. Its durability under traffic, its cleanliness, its noiselessness, and freedom from undue slipperiness, as compared to most forms of pavement, may he regarded as established.” The court held that the following claims, under the evidence before it, were infringed: “5. In a street pavement, a bituminous mineral structure, the mineral ingredients of which are fixed and of several grades, so graded as to give the structure an inherent stability. • “(j. A bituminous street pavement structure, containing mixed mineral ingredients of such grades as to give the structure an inherent stability.” “11. A street paving structure, composed of a mixture of mineral or wearing ingredients and a plastic binder, the space between the mineral ingredients being less than 21 per cent, of the whole, and the plastic binder occupying said space.” Upon the question of infringement, if the specifications for laying the pavement are adhered to, the court has been favored with the affidavits of some eminent experts, expressing directly opposite conclusions. The negation of infringement is based largely, if not entirely, upon the scope which the expert thinks proper to be allowed the several claims in the patent. If these claims in the patent are valid, as I must hold them to be on this application, it is difficult to hold that infringement will not result if the contract for laying down this pavement is carried out according to specifications. Putting the most favorable construction upon defendant’s affidavits, it suffices to say that they do not raise sufficient doubt upon the question to justify a denial of a preliminary injunction, if it be otherwise proper. The street paving, over the laying of which the dispute arises, .will cover the distance of one block only in the city of Montgomery, on a'street 50 feet wide and about 100 feet long. So far as the present record discloses, it is not contemplated to connect the pavement on this block with other kinds of paving, or even with the kind of paving for which the contract calls. The amount to be paid for the work is about $3,500, and the royalty exacted, if it were done under the Warren patent, would amount to a comparatively small sum. Complainant’s affidavits show that the defendants ■ were notified that the specifications under which the pavement is to be laid would infringe complainant’s patent, and that complainant had offered to let the work be done under •its usual royalty. Under the circumstances of the prior litigation concerning this patent, some of which was with the Metropolitan Engineering’ & Construction Company, it is not at all improbable that the laying of the pavement here was intended as a challenge in this juris-' diction of the patent or the validity of some of its claims. Neither the city nor the other defendant is in the position to set up public inconvenience from the stoppage of the work, which has not yet been begun, .since- the contract was made with full knowledge of the claims of complainant and that an injunction would probably be sought. Nothing has been decided in the litigation in Illinois between the complainant and the Metropolitan Engineering & Construction Company which adjudges anything or estops either party from asserting the validity or the invalidity of this patent or any of its claims. If we — 423 — concede that comity controls the matter, this court, in view of the final decision of the Circuit Court of Appeals as to the validity of this patent, cannot refuse to entertain the suit brought here by the complainant against the Metropolitan Kngineering & Construction Company and another person, not a party to the Illinois suit, to prevent a threatened infringement in Alabama. When an infringement of a patent is committed, or is about to be committed, in another jurisdiction, the complainant, who has brought a prior suit for such infringement in such jurisdiction, is not compelled to go back there to seek a fresh injunction against the same infringer, and another person not a party to that suit, and of whom it has no jurisdiction, to prevent infringement in another district. Complainant has a right under the Constitution and laws to choose either forum as to this particular infringement, and this court has no power to refuse to entertain the suit as to an infringement done or threatened within its jurisdiction. True, this may finally lead to conflicting judgments in the two courts as to the validity of this patent. Such results cannot be avoided under our present system, where no particular court has exclusive jurisdiction, and the validity of a patent may be tested in different courts of co-ordinate jurisdiction at the same time, and even by the same parties, when nothing has been decided in the litigation between them estopping either of them from setting up new evidence on points which may finally overthrow the patent. Comity cannot prevent such results; but neither of the courts so circumstanced ought to go any further than the necessities of the particular case in its own jurisdiction absolutely require. Neither should-attempt to decide upon an infringement committed in the jurisdiction of the other, nor should either court require an accounting between the parties as to an infringement committed in the jurisdiction of the other. The bill here not only seeks to prevent infringements in Alabama, but elsewhere, and also an accounting here for all gains, incomes, and profits which defendants may have gained from like infringements since the transfer of the Warren patent to the complainant. Should this court attempt to give that relief, and the suit in Illinois continue to be prosecuted, the same parties might be bound at the same time by conflicting judgments; the one holding that complainant was not entitled to an accounting and the other holding that it was. This would be a reproach to justice. This court, if it be found on final hearing that the complainant is entitled to relief, will, so long as the suit is pending between the parties about other infringements in Illinois, refuse to entertain any inquiry as to infringements in Illinois, or as to any accounting between the parties, save as to transactions in Alabama. We repeat, if complainant’s patent be in fact infringed, or is about to be infringed, it has a right to complain in whatever jurisdiction that infringement takes place, and it cannot be cut off from this right because it lias a suit in another court against the main infringer for a like infringement there, in which nothing has been adjudged; nor can complainant be turned out of the equity court here, on the theory that, having established a royalty, a recovery at law will be adequate compensation, and the injury cannot be irreparable in such sense as to give it a standing in a court of equity. Irreparable injury, in the sense — 424 — here used, does not necessarily mean that complainant will be ruined or grievously harmed, if the court of equity does not intervene, but only that some legal right of complainant will be illegally taken from it, which in equity and good conscience it is entitled to enforce, the proper and full enjoyment of which will be impaired or lost, if the court of equity declines to interfere and puts complainant to its action at law for damages. A large element in bringing a patent into use and giving it a market value is the estimate of the public as to its utility, and whether persons who deal in the process or manufacture believe the same result can be effected under another process, to be had by dealing with other parties at less cost. The completed work here would advertise itself, in most effective form, as a pavement of equal merit to that covered by the Warren patent, laid down and used in defiance of the rights of the patentee, in the capital of the state, where it would inevitably attract attention as the work of a competitor who offers to furnish the process at less cost than it could be had under the patent. At this time, perhaps, more than at any other period, states and municipalities are concerned in building roads and streets and as to the best methods of construction. It is difficult to see how far the failure-of complainant to seek injunctive relief to prevent the building and use of such pavement would affect the value of its patents or diminish the number of licenses to use it. The reputation of a patent, like the good name of an individual, is easily injured, and it is hard, no matter how wrongful the injury, to counteract its effect. An ounce of prevention is worth a pound of cure. The full damage which might be inflicted upon the patentee, under such circumstances, if the patent be in fact infringed, is largely speculative, cannot be accurately ascertained, and therefore cannot be recovered at law. Equity alone can give an adequate remedy. The court has made laborious examination of the records in the litigation concerning this patent in the Circuit Court of Appeals and in the Circuit Court of Illinois, and has carefully considered the points and arguments made by counsel and the numerous affidavits filed in this case. The pressure of other business upon the court prevents any further discussion of them. Under the circumstances of this case, substantial justice will be done between the parties at this time by allowing the work on East Jeff Davis avenue to be unde. „aken and completed, upon defendants’ executing a bond to complainant, in the sum of $1,500, conditioned to pay all such costs and damages as may be awarded against defendants in this suit, if upon final hearing it shall be adjudged that the street paving on East Jeff Davis avenue infringes any claim complainant can lawfully set up under letters patent No. 727,505. If defendants fail to give bond within 20 days, then upon complainant’s application a preliminary injunction may issue, forbidding the execution of the contract between the city of Montgomery and the Metropolitan Engineering & Construction Company, under the specifications made a part of the contract for the laying of the pavement, so far as concerns the laying of the top or wearing surface of the street. All other questions are reserved.