Hill v. Whitcomb.

there was not a full, adequate, and complete remedy at law. It would, in my opinion, present a case for equitable relief in this court, if by reason of the parties being citizens of different States, this court had jurisdiction of the case. But it would not be, and this case is not, a bill to prevent " the violation of a right secured by patent," but of a right secured by contract. The machine purchased by the Whitcombs of the patentees had passed out of the monopoly and from under the protection of the patent laws of the United States, and was, like other property, subject only to the operation of the laws of the State. Goodyear v. Beverly Rubber Co., 1 Cliff. 348; Adams v. Burke, 1 Off. Gaz. 282; Hawley v. Mitchell, 1 Off. Gaz. 306; Bloomer v. McQuewan, 14 How. 549; Wilson v. Rousseau, 4 How. 646; Metropolitan Co. v. Earle, 2 Fish. 203.

In a court of general equity jurisdiction, the fact that the patentee had, in fraud of his contract, conveyed such a right to use the machine in the city of Worcester to one who had notice of the contract, would furnish a ground for equitable relief, for the very reason that thereby the purchaser had acquired the right to use the machine without violation of the patent laws, when the patentee had stipulated that no one but the first licensee should be able to do so without being liable as an infringer. The case is like that, cited by complainants' counsel of Taylor v. Stibbert, 2 Ves. Jr. 437, where the vendor of real estate was bound to grant a lease, or answer in damages for non performance. The purchaser bought with notice of the contract, and the court held that he must fulfil it. The equitable jurisdiction springs in that case from the breach of the contract, the notice of it to the vendee, and the want of an adequate legal remedy. Admitting that all these elements exist in the present case they do not confer jurisdiction in this case over these parties; for these facts alone do not bring the case within any grant in the Constitution to Congress of judicial power, or any act of Congress conferring such power on the federal courts. Bill dismissed.

Causten Browne and Jabez S. Holmes, for the complainant.

G. S. Hillard, M. F. Dickinson, Jr., and J. E. Maynadier, for the defendants.

A patent for abdominal supporters, intended to sustain the viscera of well formed persons, will not be held void for want of novelty, upon the testimony of a physician, that, prior to the complainant's invention, he had made several supporters, of which no speciinens are produced, of the same general character," for deformed patients; each being peculiar and special in its construction, and made with a view to the particular deformity of the patient for whom it was intended.

A licensee who has elected to put an end to his license, and denies the validity of the patent, and refuses to recognize any title in the patentee, will not afterwards, when the validity of the patent has been sustained, be permitted to set up the license from the patentee as a defense to the action.

One who purchases patented articles from a licensee, with knowledge of his having repudiated his contract with the patentee, will be liable for the sale of such articles, as well as for the sale of those he makes afterwards. (Before SHEPLEY, J., District of Massachusetts, February, 1874.)

SHEPLEY, J.

Defendant is charged with the infringement of letters patent reissue numbered 2,165, granted to Sarah A. Moody, for improvements in corsets and abdominal supporters. The invention consists in certain improvements, and changes in the form and construction of corsets, to fit them to perform the function of supporting the abdomen in cases in which an artificial support is required. When adjusted according to the specifications in the patent, the operation of the improved supporters is to lift and support the abdominal viscera, transferring the strain from the abdominal muscles to the base of the spinal column and hips, and relieving the pelvic viscera from abnormal pressure. The utility of the invention is proved by the testimony of eminent surgeons, and of distin

Moody v. Taber.

guished physicians of both sexes. The exhibits introduced to establish the fact of an anticipation of the complainant's invention fail to support the defence of want of novelty set up in the answer. The one most nearly resembling the invention of the complainant is exhibit No. 6, produced by Dr. Charles H. Spring. This, he testifies, was made for and worn by a patient of his “about five or six years since." This was after the date of complainant's invention. He says this was "of the same general character" as those made by him for the past ten or eleven years. But when we consider the fact that the witness had given special attention to diseases and deformities of the spine, and that each corset made under his direction was peculiar and special in its construction, and made with a view to the particular deformity of the patient in each case, it would not be safe to treat a patent as invalid upon testimony no more definite than that which speaks of those contrivances of an earlier date, of which no specimens are exhibited, as being of the same general character as exhibit No. 6. Some of the witnesses consider the invention described in the specification of the patent to be of the same general character as that described in the specifications of the patent to Elizabeth Adams. Yet a careful reading of the two will show that there is no similarity, much less identity, in what is claimed as invention in the two patents. Exhibit No. 6 itself is also proved to be applicable only to deformities, and, if applied to a fully developed or well-formed person, would not extend low enough to have any elevating or supporting force to counteract the pressure of the abdominal viscera. This exhibit, like all the contrivances made under Dr. Spring's direction, had for its primary function the support of an enfeebled, diseased, and deformed spine. The support given in any case to the abdominal viscera was merely auxiliary and secondary. The other exhibits offered in evidence fail to sustain this branch of the defence, for reasons clearly and fully stated in the testimony of the expert witnesses, especially in that of Dr. Newton.

Exhibits A and B, representing the corsets sold by the defendant, are clearly within the description in the complainant's patent. Without going over in detail the relations be

Moody v. Taber.

tween the complainant and the defendant Taber, and also the Boston Corset Skirt Company, which was originally, and prior to the failure of the company, a licensee of the complainant, it is sufficient in this case to say, that, although the company could have availed itself of the right to sell the supporters on hand at the expiration of the contract, by paying the license fee according to the terms of the contract, the company elected to repudiate any rights or liabilities under the contract, and to determine the contract relations absolutely. This it did by its letter of October 19th, 1869, in which the company say to the complainant: "In order that there may be no misunderstanding in the future, we hereby give you notice that we understand the contract to be at end, and we shall not therefore account to you for any profits we may derive from the manufacture and sale of abdominal supporters after October 10th, 1869."

The company could not be permitted thus to put an end to the contract, and deny the validity of the patent, and refuse to recognize any title in the patentee, and, afterward, when the validity of the patent is sustained, to set up a license from the patentee to vend those on hand after October 19th, the date of the letter. The defendant bought the balance on hand, at the time of the failure of the company, of the corsets manufactured under the patent, with full knowledge of complainant's rights; and for the sale of these, and all made and sold by him like exhibits A and B, he must be held to have infringed, and be liable to account for the profits. Decree for injunction and account.

T. S. Wakefield and J. B. Robb, for the complainant.

Chauncey Smith and IV. W. Swan, for the defendant.

44

The first claim in the patent to Isaac Adams, Jr., August 3, 1869, for the electro-deposition of nickel by means of a solution of the double sulphate of nickel and ammonia, or a solution of the double chloride of nickel and ammonium, prepared and used in such a manner as to be free from the presence of potash, soda, alumina, lime or nitric acid, or from any acid or alkaline reaction" is infringed, by the use in the electro-deposition of nickel, of a solution of the double sulphate of nickel and ammonia, containing one one-thousandth part of tartrate of ammonia, and one eighth-hundredth part of ammonia, the evidence showing the first of these to be an inert substance in the solution, and the second to be speedily eliminated from the solution in use, by evaporation.

The validity of the patents for improvements in the electro-deposition of nickel, granted to Isaac Adams, Jr., August 3, 1869 and May 10, 1870, affirmed.

(Before SHEPLEY, J., District of Massachusetts, February, 1874.)

SHEPLEY, J.

The defendant is charged with infringement of letters patent of the United States, granted to Isaac Adams, Jr., for “improvements in the electro-deposition of nickel," dated August 3, 1869, and May 10, 1870, both of which patents have been duly assigned to the complainant.

Defendant denies the infringement, and alleges that Adams was not the original and first inventor of what is claimed as his invention in either of the patents.

The history of the state of the art of electro-plating with nickel, or what should with more propriety, in view of the progress then made in the art, be denominated the electrodeposition of nickel, prior to the discoveries of Dr. Adams, is sufficiently given in the opinion of this court in the case of United Nickel Co. v. Authes, 1 Off. Gaz.'578, not to require rep