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set forth an exercise by the complainant of the option given by the contracts, whereby, as it is averred, the expiration of the contracts was postponed until January 1, 1896. This supplemental bill also contains an averment not contained in the original bill, that the Adams & Westlake Company is a licensee of the complainant, engaged in manufacturing stove boards; and it charges that the defendant is indirectly engaged in manufacturing stove boards which come into competition with stove boards made by the Adams & Westlake Company. The cause is now before the court upon the original bill, the supplemental bill, together with the affidavits on which the temporary injunction was granted, the defendant's answer to the bill and to the supplemental bill, and the affidavit of the defendant in opposition to the motion. In this position the application is substantially an orig. inal application for an injunction pendente lite, similar to the temporary injunction granted on the original bill.

By the injunction thus asked for, the complainant seeks to restrain the defendant from manufacturing articles similar to articles manufactured by the complainant under the license agreements, and to restrain him from transferring a certain patent, No. 354,445, and from granting any license right under any application pending in the patent office for letters patent for improvements in lamps and their attachments, and from amending or proceeding with the said application. And the complainant also seeks to restrain the defendant from using or permitting his name to be used in any manufacturing business, or by any manufacturing house which shall make or sell ar ticles like or similar to, and which shall come into competition with, articles made or sold by the Adams & Westlake Company, which corporation, as before stated, is distinct from the complainant corporation, and is no party to this action, nor to any of the contracts set forth in the complainant's bill. In regard to the first part of the injunction asked for, I remark that the bill nowhere states that the complainant is engaged in manufacturing any articles patented by the defendant, and the defendant, in his affidavit, states that the complainant has gone out of the business of manufacturing or selling ar ticles covered by the license agreements with the defendant, which statement is not disputed. This fact seems fatal to the part of the injunction now under consideration. The license agreements, if not expressly, by necessary implication, contemplate the manufacture by the complainant, during the existence of the contracts, of articles constructed under defendant's patents, and the payment of a royalty to the defendant. The continuance of the complainant in the manufacture was one important part of the arrangement. When the complainant went out of the business of manufacturing and selling any of those articles it became impossible for the defendant to perform its agreements in this particular, and the defendant was at liberty to terminate them. But, if this be otherwise, it is evident that, if the complainant is not engaged in manufacturing or selling articles under the defendant's patents, no injury to the complainant can come from the acts charged, and the necessity for the injunction fails. Upon this ground, therefore, that portion of the injunction asked for is denied. That portion of the injunction which seeks protection for the

Adams & Westlake Company must also be denied. The defendant has no contract with the Adams & Westlake Company. His contracts are with the complainant. The provision in his contracts with the complainant is that during the term of said agreement he "will not use, or allow or permit his name to be used, in any manufacturing business, or by any manufacturing house which shall make or sell articles like or similar to, or which would come into competition with, the articles made or sold by the Adams & Westlake Manufacturing Company." This provision affords no foundation for an injunction to protect the Adams & Westlake Company against competition. The defendant's contracts do not relate to competition with the Adams & Westlake Company, and that corporation is not a party to the action. It is said that the Adams & Westlake Company is a licensee of the complainant, and therefore the complainant has the right, and is charged with the duty, to protect the Adams & Westlake Company from competition by the defendant. But the bare fact that the Adams & Westlake Company is a licensee of the complainant (which is all that appears here) does not show that the complainant is bound to protect the Adams & Westlake Company from competition by the defendant. This is not an action for infringement, but to enforce in behalf of the complainant certain agreements between the complainant and defendant. If the Adams & Westlake Company have any rights under any contracts of the defendant, or are in danger of injury from his acts, they should ask such protection by an action of their own. In this action that corporation and its rights are not before the court. Damage to the complainant by the use of the defendant's name in the manufacture of articles that compete with articles made by the Adams & Westlake Company, if any such there are, is not averred. Moreover, when it appears that no articles are made or sold by the complainant under defendant's patents, it is not seen how it could be possible for the defendant to make or sell articles which would come into competition with the complainant in respect to such articles. This portion of the injunction must therefore be denied, upon the ground that the use of the defendant's name in competition with the Adams & Westlake Company is not a violation of the defendant's agreements with complainant, and it does not appear that any injuries to the complainant would result therefrom.

There is another ground taken in opposition to this motion which, in my opinion, is fatal to the complainant, namely, that the contracts set up in the bill have expired. By their terms the contracts sued on were to expire January 1, 1891, unless extended under the option which the agreement contains. The provision for the extension of the contracts is as follows:

"Fourth. The said William Westlake hereby agrees, upon the request of the said Adams and Westlake Manufacturing Company, made on or before the expiration of the term of this agreement, to extend their license and agreement for the term of five additional years from and after January 1, 1891, upon the same terms of payment of royalty as set forth in article three above written, that is, upon payment of $200 per annum during the extended term."

That portion of the letter to the defendant dated December 26, 1890, and signed "J. H. Raymond, Attorney at Law and in Fact for

the Adams and Westlake Manufacturing Company, and the Adams and Westlake Company," relied on as effecting an extension of the contracts, is as follows:

"I beg to add to my recent letter to you this formal notice that my clients elect to extend for the period of five years from December 31, 1891, their contracts with you, dated February 2, 1886, of which notice kindly acknowledge receipt."

So far as appears from the papers before me, the defendant took no notice of this letter, and it has not been claimed that he ever, by any instrument in writing, agreed to an extension of these contracts. In my opinion, the notice above quoted from the letter of J. H. Raymond did not effect an extension of the agreements, for two reasons: First, because it was a notice from two corporations that those two corporations "elect to extend their contracts with you, dated February 2, 1886," when the defendant had no contract with one of these corporations. Furthermore, the notice was that these two corporations elect to extend their contracts for one year longer than was provided in the contract between the complainant and the defendant. By the contracts an option was given to the complainant to extend the time of the contract for five years from January 1, 1891. The notice sent says that the two corporations mentioned in it elect to extend their contract for five years from December 31, 1891; that is, for one year longer than the complainant's contract stated. It is said that this was an oversight on the part of the writer. If such be the fact, nevertheless, the only notice the defendant ever received related to an extension for five years from December 31, 1891, which he had never agreed to give. In my opinion, such a notice did not effect an exten. sion of the contracts. The injunction asked for must therefore be denied upon the further ground that the contracts which form the foundation of the complainant's bill have expired.

EDISON ELECTRIC LIGHT CO. et al. v. SAWYER-MAN ELECTRIC CO. December 15, 1892.) (Circuit Court of Appeals, Second Circuit.

1. PATENTS FOR INVENTIONS-SUIT FOR INFRINGEMENT-LACHES.

The owner of letters patent No. 223,898, issued January 27, 1880, to Thomas A. Edison for an incandescent electric light, having seasonably brought suit in 1885 against the United States Electric Lighting Company for infringement, no other company engaged in manufacturing infringing lamps can complain that the owner of the patent was guilty of laches in not bringing suit against them for infringement prior to the decision of that case in the circuit court, (October 4, 1892,) for all persons interested in having the patent defeated must have been familiar with the litigation, and with the fact that it was very expensive and arduous, and they entered upon their business with an understanding of its risks, and of the consequences which would befall them as infringers if the patent should be sustained.

2. SAME.

There are much stronger equities, however, in favor of users who, prior to the decision in the circuit court, and at a time when judicial decisions in foreign countries interpreting the patent were in conflict, purchased from the infringers electric lighting plants which require the lamps of the patent for their operation, and who are now willing to accept their lamps

from the owner of the patent on reasonable terms; and on application to the court these equities will be enforced.

3. SAME.

As to users, however, who acquired their plants subsequent to the decision of the circuit court sustaining the patent, they must be held to have proceeded with full knowledge of the invalidity of the patent, and must suffer the consequences of infringement.

4. SAME-INJUNCTION PENDENTE LITE-UNLAWFUL COMBINATIONS.

A person owning a patent which has been sustained by an adjudication of the circuit court cannot be deprived of his right to an injunction pendente lite in a subsequent action against substantially the same parties for a further infringement, on the ground that he has entered into a combination with others owning similar patents for the purpose of securing an entire monopoly of the business in the United States.

5. SAME-ESTOPPEL.

Subse

In May, 1885, complainant, the Edison Company, owning letters patent No. 223,898, issued January 27, 1880, to Thomas A. Edison for an incandescent electric lamp, commenced a suit for infringement against the Consolidated Company, which was manufacturing electric lamps under the Sawyer-Man patents. About the same time, the Thomson-Houston Company was engaged in manufacturing electrical apparatus, and as the result of negotiations between it and the Consolidated Company the defendant, the Sawyer-Man Company, was organized to manufacture under the SawyerMan patents, the Consolidated Company executing a license to it. The majority of defendant's stock was owned by the Thomson-Houston Company, which thereafter sold the same to the Consolidated Company, in consideration of a large amount of the latter's stock and bonds. quently the Thomson-Houston Company sold such stock and bonds to the Westinghouse Company, and at the same time, by an agreement between the Thomson-Houston Company and the Consolidated Company, the fulfillment of which on the latter's part was guarantied by the Westinghouse Company, the Thomson-Houston Company was licensed to make incandescent lamps for export and for use with apparatus of its own manufacture in this country, and the Westinghouse Company was prohibited from selling incandescent lamps for use with the Thomson-Houston Company's generating apparatus. The agreement recognized the fact that during its continuance the Thomson-Houston Company could make and sell lamps not covered by the Sawyer-Man patents, and in that event the Consolidated Company was to be released from its obligation not to sell lamps for use with the Thomson-Houston Company's apparatus. In the mean time, and while the suit between the Edison Company and the Consolidated Company was still pending, the Edison Company and the Thomson-Houston Company had united, so that substantially the whole lampmaking business was done by the three companies. Held, that the fact that the Edison Company entered into this combination did not operate as an estoppel, because of the dealings between the Thomson-Houston Company and the Westinghouse interests.

Appeal from the Circuit Court of the United States for the Southern District of New York.

In Equity. Bill by the Edison Electric Light Company and the Edison General Electric Company against the Sawyer-Man Electric Company for infringement of a patent. A pro forma decree, awarding a preliminary injunction, was entered below, and the defendant company appeals. Decree modified.

Kerr & Curtis, (Edmund Wetmore, Elihu Root, and Leonard E. Curtis, of counsel,) for appellant.

Dyer & Seely, (Clarence A. Seward, Grosvenor P. Lowrey, and Richard N. Dyer, of counsel,) for appellees.

Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. v.53F.no.6-38

PER CURIAM. This is an appeal from an order of the circuit court granting an injunction pendente lite restraining the defendant from making, using, or vending the incandescent electric lamps of the patent granted to Thomas A. Edison, January 27, 1880, No. 223,898, of which the complainants are the owners. The order was granted pro forma, in the view that a final disposition of the questions involved might be promptly made by the decision of this court. The validity of the patent, and the infringement of its second claim by such lamps as the defendant makes, were adjudged by the circuit court for the southern district of New York, July 14, 1891, in a decree at final hearing. That suit was brought against the United States Electric Lighting Company, and was defended by the Westinghouse Electric Company, a corporation which since October 10, 1888, has been the owner of the business carried on in the name of the present defendant. The business of the defendant consists exclusively in the manufacture of the infringing lamps. The decree of the circuit court adjudging the validity of the second claim of the patent, and its infringement by lamps such as are made by the defendant, was upon an appeal affirmed by this court October 4, 1892. See 52 Fed. Rep. 300. That decree, among other things, awarded the complainants a perpetual injunction. The present suit was brought subsequently to that affirmance.

It is apparent that the order for the present injunction is, in effect, one to extend the terms of an injunction already granted in a suit determined by the court of last resort between the same parties, or their privies, so as to include a new infringement. For an understanding of the grounds upon which the defendant contends the injunction ought not to have been granted, the following narrative is necessary: For several years subsequent to 1880, the Edison Company and the United States Electric Lighting Company were the only manufacturers of incandescent lighting apparatus in this country doing any considerable business. The United States Electric Lighting Company began manufacturing incandescent lighting apparatus, including the lamps which have been held to be an infringement of the Edison patent, in the summer of 1880, and continued in such business until a recent period. In May, 1885, a suit was brought against it upon the present patent. Another corporation, the Consolidated Electric Lighting Company, was organized in September, 1882, and began the manufacture of incandescent lighting apparatus. This company was the owner of and operated under what are known as the "Sawyer-Man Patents" for electric lighting apparatus; and under these patents it assumed that it had the exclusive right to make · and sell the lamp claimed in the patent in suit. In May, 1885, suit was brought against it by the Edison Electric Light Company upon the patent in suit, and about the same time it brought suit against the Edison Company for infringement of its own patent. In 1883 a corporation known as the "Thomson-Houston Company" began the manufacture and sale of electric apparatus for lighting and power. As the result of negotiations between the Consolidated Electric Lighting Company and the Thomson-Houston Company, the SawyerMan Company, the present defendant, was organized in September,

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