EDISON ELEC. LIGHT CO. 11. PHILADELPHIA TRUST, S. D·· INS. 00.

397

cla1m, but by exploring the specification in'search of invention; and invention disclosed, not claimed, was made the measure of right. The difference is a palpable one, and it clearly distinguishes that case from this one. I have reached the conclusion that the only claim of the patent in suit is for a process, and is not for a product; and, waiving any ques· tion as to whether use or sale of the product by the defendants jointly has been shown, it has at least not been established that they have in any manner used the process. It results from this that the charge of infringement has not been sustained. Other defenses were interposed, and the points which they involve have been very thor· oughly and ably argued; but it is unnecessary, and therefore not desirable, that I should intimate any opinion upon them. I do not do so; but upon the ground, and for the reasons, which have been etated, the bill is dismissed. with costs.

EDISONELECTRIO LIGHT CO. et aI. v. PillLADELPIDA TRUST, SAFEDEPOSIT & INS. CO. et aI. SAME v. MANUFACTURERS' CLUB OF PillLADELPHIA. SAME v. SPRECKELS SUGAR-REFINING CO. (CirCUit Court, E. D. Pennsylvania. January 26,1894.) Nos. 29, 30, and 31.
PATENTS-PRELIMINARY INJUNCTIONS DECISION8 BY CIRCUIT COURT 011' PEAL8 AND OTHER CIRCUIT COURTS.

AP-

The Edison incandescent electric lamp patent, No. 223,898, was sustained by the circuit court of appeals for the second circuit after ex· haustlve litigation. Afterwards the new defense of anticipation by one Henry Goebel was set up in a suit In the circuit court for the eastern district of Massachusetts, and, a"ter a thorough luvestigation thereof, a prelhninary Injunction was granted. In other SIlitS in which this defense was Interposed a preliminary Injunction was granted by the circuit court tor the eastern district of WisconsiI:l- but was denied by the circuit court for the eastern district of Missouri on the defendant's giving bond. A subseQ.uent suit was brought in the circuit court for the eastern district of Pennsylvania, and the defendants therein claimed that they should be exempted from a preliminary injunction In respect to usIng certain lamps made by the company, which the court for the eastern district of Missouri had refused to enjoin. No evidence was sublultted on which the court could form an independent judgment as to the alleged Goebel anticipation. 'Held that, In view of the decision of the circuit court of appeals, the injunction should be granted.

These were three suits, brought by the Edison Electric Light Company and the Edison Electric Light Company of Philadelphia against the Philadelphia Trust, Safe-Deposit & Insur-ance Company and others, the Manufacturers' Club of Philadelphia, and the Spreckels Sugar-Refining Company, respectively, for infringement ·of the Edison incandescent electric light patent. lleard on application for preliminary injunctions. Samuel B. Huey, Richard N. Dyer, and O. E. Mitchell, for com. plainants. Crarath & Houston and John O. Bowman, for defendants.

898

Ii:"

FEDERALREPORTE;ll,

vo]. 60.

Circui* Judge. The patent in 8uit,.]l'o. 228,898, 27, 18$0, to A. Edison, after protracted litigq.tiqp. a most vigorous .. was sustained by the circuirt court of the United States for the southern dtstrict of New York an<l bythe·United StatE\S circuit of appeals for the second disi Electric' :J;.ight Co. v"United Statei!l Electric Lighting 454; Id,,3C. G. A. 83, 300; Edison Electric Light Co.v. Co., 3 C.jC.·A. 605, 53 Fed. 592. The uncontradicted proofs !!leVeralcases now before me show infringing py the and it is conceded that the plainti:O;lt the LightrCompany, and its &dusive licensee in, the city .of Philadelphia.; the Edison Electric ,Light Company Philadelphia, are, entitled, toa preliminary injunction in each three suits. The court, ,however, is as4ed to exempt from the operation of the injunctions .certain lamps (confessedly within the second claim of the patent) which were manufactured by the Columbia Incandescent. LamP Company, a cOil'{loration of the state of Missouri, for the reMon that in a suit brought against that company by, the Edison,;ElectricLigbt Company and the Edison C9P1paJlY in the circuit court of the uniwd States for. . of Mi'SSouri, the decision, in the second circuit, Hallett a motion for a prelimipary injunction upon'the defendant's giving ahond in the penal 'snm of $20,000, conditioned for the payment of any sums which might be decreed in. that in Javor of the complainants therein. 56 Fed. 496. ground for this refusal was a defense there set up, which had not in the second circuit, that the incandescent electric lam.tfdr· which Edison was. granted the patent 'Was really the priM .of oneJ;Iepry Gqebel. But in the earlier case of Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co., 54 Fed.' 618i that defensewus interposed to a motion for. a preliminaryinjtinetion, and was carefully investigated by Judge Colt, .who decided Goebel's stpry of 4is invention in itself was so improbable, and the evidence to sustain the alleged anticipation was of such doubtful' character, that the consideration of this defense ought to be postponed untilfl.nal hea,ring, and that in the mean time the plaintiff was entitled to enjoy the fruits of the decrees sustaining the patent. Accordingly, Judge Colt granted a pl'eliminary injunction. Inthe more recent case of Edison Electric Co., 57 Fed, 616, in the circuit court Light Co. v. Electric the United States for the ,eastern district of Wisconsin, Judge Seaman expressed views similar to those of Judge Colt, and awarded a. preliminary. injunction to restrain infringement of this patent. NQ evidence whatever in, support of. the Goebel dl;lfense has been submitted to me, so that lam without the means oUOl'ming an indepeJ;J.dent opinion as to whether it rests upon a substa,ntilill basis. Under all the circumstances, then, to giv;e to Judge Hallett's refusal to . grant an injunction the effect here claimed for it would be to carry the principle of judicial oomity to a most extravagant length. The Edison Electric Light Company of Philadelphia, vitally interested here, is not a party to the Missoun suit. But,aside'from that con.

BALL" SOCKET F.(SfENEk CO. fl. BAt!>

FASTENING 00.

899

sideration, the owner" Mit patent undoubtedly may main.tain suitJJ for infringement against the manufacturer and user of the patented device simultaneously. Birdsell v. Shaliol, 112 U. S. 485, 5 Sup. Ct. 244; Kelley v. Manufacturing Co., 44 Fed. 19. True, pending a test suit against a manufacturer involving the validity of a patent, in which a preliminary injunction against him has been denied, courts in other jurisdictions have declined to enjoin preliminarily the users of the device. But the Edison patent has been sustained under circumstances which entitle the adjudications to high regard. It is the accepted doctrine that the decision of the supreme court, after exhaustive" litigation upon the merits, sustaining a patent, will ordinarily be regar<ledas conclusive on a motion for a prelimi· nary injunction, thelpresumption against the existence of any valid defense against the patent prevailing at that stage of" the Purifier Co. v.Christian, 3 Ban. & A. 42, 51; American Bell Tel. Co. v. Southern Tel. Co., 34 Fed. 795; American Bell Tel. Co. v: McKeesport Tel. Co., 57 Fed. 661. I think the same effect ought here to be accorded to the decisions of the United States court of appeals for the second circuit sustaining the Edison patent. In each of these cases a preliminary injunction in the form prescribed by the courts of the second circuit will be allowed.

BALL & SOCKET FASTENER CO. T. BALL GLOVE FASTENING CO. (Circuit Court of Appeals. First Circuit. No. 57. February 21, 1894.)

On petition for rehearing. The facts are fully stated in the prior -opinion of this court, reported in 7 C. C. A. 498, 58 Fed. 818. Before PUTNAM, Circuit Judge, and NELSON, District Judge. PUTNAM, Circuit Judge. The appellee filed, October 30, 1893, a ,petition for a rehearing in this cause, and a brief in support of it. The matters which it desired to reargue were two, and were stated 1n the following:
"Your honors, in considering the Mead buttonhole member, have mentioned, and apparently have considered. only one of the forms of this device 8S "made by the appellant. The record discloses a number of forms of the Mead deVice, and it is only by an examination and knowledge of each and all -of these buttonhole members that they can be considered as a whole. or separately. The appellee, your petitioner, does not believe it necessary to present arguments to change in any degree the construction given by your honors to the fourth claim ot the Kraetzer patent No. 306,O:!1; it desires the opportunity to present the various buttonhole members which the record discloses the appellant has made, and to show that, under the very con.struct1on which your honors have put upon this claim, it covers these devices. · · · In relation to Kraetzer patent, No. 200,067, it is respectfully desired to argue what the record discloses the 'eyelet' of that patent is."

The brief had prefixed to it a drawing showing the appellee's con· -struction of what it styles the Mead fastener as made by the appell1ant with a so-called "perforate cap," and the Mead fastener as made