Hussey v. Whitely.

By this agreement or contract, Hussey granted to Minturn, Allen & Co. the exclusive right to make and sell his improved reaping and mowing machine, during the continuance of his patent, within the county of Clark, and a number of other counties in the State of Ohio, and they were to pay ten dollars for each machine made and sold by them. Hussey expressly reserved the right of sending machines of his own manufacture into the territory embraced in the contract.

The inquiry arises, whether this contract imports such a transfer of Hussey's interest in this patent as to preclude him from a remedy in chancery for infringement in making and vending the patented machine within any counties included in the grant to Minturn, Allen & Co. And it would seem that section 17 of the act of July 4, 1836, viewed in connection with the contract, furnishes a satisfactory solu tion of the inquiry.

That section, after declaring that the Circuit Courts of the United States (or District Courts having Circuit Court powers) shall have jurisdiction of all suits and controversies arising under the patent laws of the United States, proceeds as follows: "Which court shall have power, upon a bill in equity filed by any party aggrieved, in any such case, to grant injunctions according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor, as secured to him by any laws of the United States, on such terms and conditions as said courts may deem reasonable."

The sole question is whether Hussey can be viewed as a "party aggrieved" within the meaning of the provision just quoted. And of this there does not seem to be any reason for doubt, if it be conceded that there has been an infringement as alleged in the complainant's bill.

The contract between Hussey and Minturn, Allen & Co. is not and does not purport to be an assignment of Hussey's interest in the patent within the territory named. It is a mere grant of the right to make and sell the patented

Hussey v. Whitely.

machine within those limits in consideration of the payment to Hussey of ten dollars for each machine made and sold, reserving to Hussey an unlimited right to send into that territory and vend machines manufactured by himself.

Under this contract, Minturn, Allen & Co. are mere licensees of Hussey, incurring no obligation except the payment of the stipulated price of each machine they may construct and vend. Hussey's interest in his patent remained in full force, within the counties included in the grant to Minturn, Allen & Co., subject to their right to make and sell under the contract; and his profit was wholly dependent on the number of machines made and sold by his licensees. And that profit would be reduced in proportion to the number of machines made and sold by others in violation of his right under his patent. Moreover, the right reserved by Hussey to send machines for sale within the territory named, would be of no value to him unless he was protected from unlawful infringement, as every machine made and sold within the district by an infringer would have a direct effect in depriving him of the profit he would otherwise derive from sales made within it.

He must be viewed as a "party aggrieved," in the words of the statute, and has heretofore an undoubted right to proceed in equity for the protection of his rights.

The next inquiry is whether the court, constituted as it now is, can rightfully order the dissolution of the injunction, on the facts now presented. There is some controversy between the counsel as to what occurred on the application for the injunction before Judge McLean and the ground of its allowance by him.

The order made by him, and which is now before the court, must be viewed as conclusive of the facts which it recites. That order recites that the complainant, Hussey, "had shown a valid right in equity to be protected in the exclusive enjoyment and use of the improvements patented

Hussey v. Whitely.

to him in his reissued patents, No. 449 and No. 917, and that the said patents are unlawfully infringed by their use without the complainant's license or authority in the reaping machines made by Whitely, Fassler & Kelley, and that the defendants have failed to show any good cause for impeaching or disputing the validity of said reissued patents."

It is clear, from the language of this order, that Judge McLean had distinctly under review, and passed upon: 1. The novelty of Hussey's invention as covered by his patents; 2. The infringements of those patents by the defendants, and upon these grounds, after full argument, it was adjudged by him that it was a proper case for an injunction, and the order was accordingly made. Now, it is insisted that the order was made by mistake, and against the evidence, and that the injunction should therefore be dissolved. On the part of the complainant, it is contended that the questions presented on the present motion are precisely those which were before Judge McLean when the injunction was ordered; and that its dissolution now, by the action of the district judge sitting alone in the Circuit Court, would be equivalent to a review and reversal of the judgment of the presiding judge. And most certainly, if the issue and facts involved in the present motion are substantially those submitted to and passed upon by Judge McLean in granting the injunction, it would be improper in this court, as now organized, to order its dissolution. This court will not ignore the true legal theory of the organization of the courts of the United States. By law, a district judge is associated with a justice of the Supreme Court, in holding a Circuit Court, and may hold that court alone, in the absence of the superior judge; but he would fail, in a just appreciation of the proprieties of his position, if he did not, under all circumstances, show a proper deference to the action of that superior. And clearly, it would be wrong in a district judge, as a judge of the Circuit Court, in any case, to review or set aside such

Hussey v. Whitely.

action. At least the reasons that would justify such a course must be peculiar and stringent. In my judgment, the reasons now urged are not sufficient to require this court to set aside the order of Judge McLean granting the injunction in this case.

I am not informed whether the learned judge, who ordered this injunction, gave an opinion in writing in deciding the questions before him. If the opinion was so given, it has not been presented to me; and I can not, therefore, know the course of reasoning by which the judge reached the conclusion he announced; but it appears, by reference to the order made by him, that he held the patents to Hussey-449 and 917-to be valid, and that the defendants had infringed them; and, therefore, that they ought to be restrained from the further manufacture of the infringing machines, until the case could be fully and finally heard on its merits.

It is readily conceded, that if, in support of this motion, the defendants have substantially changed the aspect of the case by adducing evidence not presented to Judge McLean, and which, it may be fairly presumed, if brought to his notice, would have led him to refuse the injunction, it would be the duty of this court to release them from its further operation. But if the questions involved are essentially the same in the two motions, and the ground of the motion to dissolve is based on the mere fact that the defendants have adduced additional evidence, altogether cumulative in its character, the motion will be refused.

In considering briefly whether the phase of this case is materially changed by the additional proofs offered by the defendants, it will not be necessary to analyze the patents to Hussey now in controversy, nor to notice critically the proofs touching the novelty of the inventions embraced in them. It is not my desire or purpose to prejudice any question which may arise on the final hearing of this case, and which must then be decided. I shall endeavor to limit my inquiries to such considerations as are necessarily connected

Hussey v. Whitely.

with the motion to dissolve this injunction. And it may be remarked, in the first place, that the complainant, in his application for the injunction, claimed only that the patents No. 449 and No. 917 had been infringed by the defendants, and these alone are referred to in the order made by Judge McLean.

The patent No. 449 is dated April 14, 1857, and is a reissue of a patent to Hussey dated August 7, 1847. The principal element of the invention covered by the original patent of 1847 was an improvement in the cutting apparatus of the reaper and mower, by the use of a slotted finger, the upper and lower parts of which were connected with each other only at the points, leaving an opening in the rear for the escape of material that would otherwise clog and impede the action of the cutter. The reissued patent 449 embraced this improvement in the finger, used in combination with a vibrating scalloped cutter; the structure and operation of which are fully and minutely described in the specification. The patent 917 is also a reissue, embracing substantially the open slotted finger of the preceding patents, with the scalloped cutter, but dispensing with the platform called for in the specification of those patents, and thereby adapting the machine to use as

a mower.

The novelty of the inventions covered by these two patents was the only question before Judge McLean on the application for injunction. All the evidence in the case had a primary reference to this point, as it was not controverted that the machines made and sold by the defendants embodied substantially the improvements patented to Hussey. And the machines, the prior knowledge and use of which, it was insisted by the defendants, impeached the novelty of Hussey's invention, were the same now relied on for the same purpose. These were the Moore & Hascall harvester, and the reaper constructed by John M. Leland. The argument then, as now, was that these were identical in the cutting apparatus with the principle of Hussey's