DYES t1. EtJREKA CON. MANUJ!"G CO.

199

did he fonn the scheme before he sent out, to defraud them? Because there must have been in each of these a plan to defraud; and then, in pursuance of that previously formed plan, he must have carried it into execution by use of the mails. You will then inquire, from this testimony, whether it is shown beyond a reasonable doubt that he formed the preconceived purpose ofgetting these advertisementa published, with the intention of not paying for them. The government is bound, upon this branch of the case,-this third count,-as upon all the others, to make the proof out in so cogent a way that no reasonable doubt is left in your minds that these facts existed: That he formed the purpose of defrauding, and used the mails in furtherance of this scheme; and this same proposition runs through each and every count in the indictment: In the first place, that he should have formed the scheme to defraud by sending the circulars of this wheat; in the second count, that he formed the purpose. to defraud by sending out the circulars for those berriea, knowinF; what they were, what he intended to fill the orders with; and, thirdly, that he formed the schemeDf defrauding these publishers by not paying them after the publication should have been duly inserted. Now, gentlemen, if upon either of these counts you find this respondent to be guilty, you .will so announce. If you find him guilty upon all, you so declare in a general way; if not guilty upon any, so announce in a general way; but, if guilty in some and not in others, then divide, and indicate on what you find him guilty, and on what not. Now, as I have had frequent occasion to say, and of which you are probably aware without my repeating it again, in every criminal case it is incumbent upon the prosecution to make out the facts that go to constitute the crime beyond.a reasonable doubt; the proof must be reasonably clear, and leave no reasonable doubt in your minds. You must come to the conclusion unhesitatingly. If the proof satisfies .you to this extent in this case, as to each or any or all of these counts, you will find accordingly. If, on the other hand, it does not reach that degree of certainty, or sureneas, then you should acquit the respondent. Or if, upon any of them, you find the proof is not sufficiently cogent to warrant his con. notion, then you will 'so declare.

KEYES

et al·. t1.

EuREKA CON. MANUF'G

Co.

(Circutt Court, N. D. California. January 26, 1891.)

L

P.lTBNT-IVRINGIIJfBNT-PRIILIMIN.lRT INroNCTlON.

In an action for infringement, brought only a few daYI before the expiration of the patent, it appeared tbat the invention was made and patented while the patentees were in the employment of defendant,tb.ou/l"h tbey soon afterwards left tbat defendant bad, witb plaintiffs' knowledge and approval, used the invention prior to tbe issue of the patent, and luch use had continued to the commencement of the suit, witbout any contract for compensation though one of tbe patenteM had notified defendant's president that, after he left its employment, defendant must pay for the use of the invention at the lame rate that othera paid. Heldt

200

. FEDERAL REPORTER,

vol. 45·

. that there was no ground for to restrain such use for the tew remaining days of the life of the patent by preliminary injunction.
2.

SAME-SUIT FOR ROYALTIES-NA!t'IONAL JURISDICTION.

The only ground of equitable Jurisdiction being relief by injunction, and patent having expired before defendant was required to answer, so that no injunction could have been granted on final decree, the only remaining cause of action, being for royalties under an implied license for the use of the invention after the notice, is purely legal, and, in the absence of a proper showing as to citizenship, there is no element of national jurisdiction, and the suit must be dismissed.

InEquity. John Floornoy, for complainants. Naphtaly, Frederick &- Ackerman and John H. Miller, for respondent. Before SAWYER, Circuit Judge. SAWYER, J. This is a suit for damages for infringement, and to en· join further infringementofletters patent No. 121,385, granted to complainants, Winfield Scott Keyes, and Albert Arents, dated November 28, 1871. The bill was filed October 29, 1888, 29 days before the expiration of the patent. The respondent W!lo'3 required by the subprena to appear on the 3d day of December, 1888, after the patent had expired. The answer wouln not have been regularly due under; the rules of the court, till the first Monday ojJanuary , 1889. No notice was given of an application for an injunction, pendente lite, and no such application was made. Consequently, before any action of the court could be had, and before. respondent was required to appear in cOUJ:t; the term of the patent had expired, and the only possible remedy upon the bill filed, was damages for an infringement; and under the circumstances of the case, a recovery of the royalties established for the use of the patent. When the patent was applied for and issued, the complainants were both in the employment of the respondent,-the complainant, Keyes. as superintendent of respondent's mine, and the complainant, Arents, as assayer and smelter at respondent's mine and smelting works, each receiving a regular salary. 'While thus engaged in the respondent's employment, and managing its works, they made the invention covered by the patent. On April 19, 1871; the complainants put their improvement, afterwards patented, on the first furnactJ of respondent, before the application for a patent, and on April 24th, the date of the application for a patent, they put it on the second furnace. Those improvements were, continuously, used in respondent's works from that time on, while complainants remained in its employment, and, afterwards, till the commencement of this suit; and such use of these improvements constitute in part, at least, if not in whole, the infringement complained of in this suit. The complainant, Keyes, left respondent's employment, as superintendent, on September 1, 1872, and complainant, Arents, as assayer, and smelter, on Novem ber 10, 1872. The respondent continued to use these improvements after complainants left its employment, down to the time of the commencement of this snit. Complainants knew of this use. It does not appear that complainant, Keyes, ever had any communication with respondent upon the subject, of the use of this improvement. But complainant, Arents, notified the president oithe respondent, in June, 1872, that the company could use

KEYES

v.

EUREKA CON. MANUF'G CO.

201

the Improvement while he remained in its employ, but that after he left such employment he would require the company to pay what others had to pay for the use of the improvement. Mr. Arents, after he left, at various times, but when, not shown, made demands upon the secretary of company, respondent, for payment for the use of the improvement, and in the summer of 1888, made a similar demand upon the president of the company, respondent. From July to October, 1888, complainants endeavored to reach an amicable settlement with ent for its said use of their improvement, and on failure to make a satoisfactory settlement, this suit was instituted. The r!lspondent does not contest the validity of the patent, or deny the use of the improvement as stated, or set up any of the defenses specially authorized by the statute. The defense is, 1, that upon the facts as they appear, no case for equitable jurisdiction is pre§ented, therefore, .the bill must be dismissed, under section 721, Rev. St. 2; That under the facts as they appear, the defendant had an implied license to use the' invention without compensation, while Arents continued in its employ ,and after he left, for the same royalties charged other parties, and, consequently, there being a license; there is no legal infringement, and the remedy of plaintiffs is an ordinary action at law to recover the amount of the royalties accrued for use under the implied license; and over such an action, no diversity of citizenship appearing, the national courts have no jurisdiction. On both grounds, I think the bill must be dismissed. The only ground for equitable jurisdiction is an injunction. As the patent expired before the respondent was required or could have been required to llppear to the suit, no injunction could have been granted in the final de· cree. No injunction pendente lite walil obtained or asked for. No pre· liminary restraining order was asked of the court, and no notice given to respondent that aninjunction pendente lite would be asked. Had an application been made upon notice, and the facts now shown been made to inres,ponse to the motion, as they, undoubtedly, would have peen, no court of equity, I apprehend, would have granted a temporary injunction for the few remaining days of the life of the patent; even if the application could have been brought to a hearing before its termination. The respondent had been. using this improvement, introduced into its works by the complainants themselves, in part, at least, before the patent was applied for, and long before it was issued, with theknowledge and manifestly the tacit approval of the complainants, with the understanding that it could use it for the usual royalty charged others, down to within a few days of the expiration of the patent. Under sU.ch circumstances it would have been grossly inequitable to suddenly enjoin it from further use for the few days the patent had to run, had suchan injunction been, seasonably, asked. The laches and tacit, not to say express acquiescence of the complainants in the the improvements. as shown by the record, estopped them from equitably rlemanding an injunction. Under the special circumstances ofthe case. equitably entitled to an injunction

202

FEDERAL REPORTER,

vol. 45.

hatl one ,been demanded. Al)d is no impeachment of the general doctl'ineannounced in many including tl),ose cases cited by coma patentee. isordinarily entitled to an injunction plainant'scounsel, wpen patent is willfully infrililged, without any fault of his own, or . other circumstances affeoting the equities of the case in favor of respond,ent for a few remaining days of the life of his patent. Undoubtedly ,anrinjunction pendente lite during the life of the patent, should not be:I;e.(use<,i: the patent is in foree, merely becajJse before a final de.0r(,16 'c,IJ,n be had in the ordinary .course of proceeding, the term of the patent would expire. But otherimporfant circumstances affect the equities'of case,that take itout of the ordinary course. ,I at;nals.o. of opinion, upon the facts disclosed, that there apSmplied itt least,tq USe this patent by the respondent, llP9pJAe,woe terms or royalties fixed for other parties, from the time left, ohespondenta, and that the use of it IJl)Rl)ner, shown,: and so longacquiesoed iq-, is not an infringement ;in tAe of that, t.erm. The reinedyof complainants, therefore, an action at law to recovertbe royalties for the use in pursuance of such implied and n(} diversity of ()itizenship of the. partiesappe.aringj( nQelementQf jurisdiction tio,nal ilQurts is shown,. and on tha.t grountl, also,· the bill must be. dis; :miSll6d, , . ,'. Let tbe bni be dismissed upon the with costa.

SMITH fl. PUTNAM.

, (Oircuft Court, D.Ma88achusettB. February 18,18111.)

.P .&.TJmTB lI'OlL !Nvl:NTIONS-INlI'RINGEMENT. Letters patent No. 183,716·. granted October 24, 1876. to William Smith for an 1mpr,oved water-closet, consisting of combination claims, one element of whioh is two Jets, are noqnfringed by a closet baving only. one jet.

. Oharle8 S. Burton and Th0'TTUJ,8 H.Wakefield, for complainant. , ·Williqm W; Swan, ·for defendant.

CoLT, J. There is one defense which is fatal to complainant's bill. The suit is for..infringement of letters patent 183,716, granted October .24,1876, to William Smith for an improved The claims relied'upon. ,and which the defendant 'is charged with infringing, are 1 and' '5, -These :are combination claims, and one of the. elements of the '{J()mbin1r.tion in 'each claim.is the jet g. It is admitted tl1at the does hot have ,this i The claims of the patent mention twojetsd and g. The closetofthe defendant has only one jet. It has been repeatedly held that acompination' ill an entirety,and that

CI,ARK'V.CITYOF MINNEAPOLIS.

203

a patentee cannot abandon a part and claim the rest, nor can hebe permitted to prove that a part is useless', and therefore immaterial, but he must stand bv' the claims as he has made them. If more or less than the whole of his ingredients are used by auother, Buch party is not liable as an infringer, because he has not used the invention Of discovery patented. Such' is doctrine of the supreme court as laid down in Schumacher v. Cornell, 96 U. S. 549. See, also, Keystone Bridge Co. v. Phc£nix Iron Co., 95 U. S. 274; Burns v. Meyer, 100 U. S. 671; Water Meter 00. v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640, 2 Sup. Ct. Rep. 819; Fay v. Cordesman, 109 U. S. 408,3 Sup. Ct. Rep. 236; Rowea v. Lindsay, 113 U. S. 97,5 Sup. Ct. Rep. 507; Manufacturing 00. v. Sargtmt, 117 U. S. 373,6 Sup. Ct. Rep. 931. Bill dismissed.

CLARK 11. CITY OF MINNEAPOLIS.

(Ofrcufe Oomt. D. Mfnnesota. January .9, 1891.)
PATBNTs POB INVBNTIONS-INPRINGEMENT-ANTI<lIPATION.

Letters patent No.401,61B, issued April 11:, 1889, to David S. White, fol' an Improvement in hoisting and loading machines, consisting of an elevated'pol'table platform, built so as to allow a car to be passed under it to receive the contents of a pivoted receptacle, with a hoisting apparatus on the platform adapted to raise the and over tbeplatform, and a receptacle on the,platform, fixed so as to receive the material elevated and emptied into the car, is. not infnngedby a Ill&: chine known as " Gre.en"s Hoisting Apparatus," which consillts of a platform 011 8S to allow a car to pass under'it, and an inclined projecting boom, up which a truck runs and abuoket is hoisted so that a receptacle, since said' Green'$ machlhe is substantially the same 8s.tbe C. W. H11I1\ eleva'tor, before the patented machine was invented. "

,

In Equity.

Pa'Ul &: Merwin, for complainant. James F. Williamson, for defendant.

J'. This suit is brought against the city of :M:inneapoli'3by C.W. Clark, assignee of letters patent issued to DavidS. White t dated April 16, 1889, No. 401,618, "fofan improvement in hoistingaJidloading machines." He claims an infringement by defendant in using what is called the "Green Loading and Unloading Mechanism for Sewer Excsvating."Defendant, in its answer, pleads (1) no patentable novelty; (2) that the patentee is not the first inventor; (3) non-infringement. I shaH consider onlythe issue raisl'd by the defenslfof non-infringement/which, in my opiriion,settles the cause. The specification of the patentee t White, states that" My invention relates! particularly ,to improvements in machilles for excavating sewers, though ·tlppiicablein' making many other ' excavations." The invention is ndtan eltCavilt()f, but can be used' itl elevating the earth, and dumping it into a receptacle in connection with the excavating machines or hlind digglngjand so he further states that