Commercial Acetylene Co. v. Acme Acetylene Appliance Co.

188 F. 89, 1911 U.S. App. LEXIS 4309

• Court: U.S. Circuit Court for the District of Eastern Michigan
• Decided: April 26, 1911
• Docket: No. 4,104
• Status: Published

Opinions

DENISON, District Judge.

Under the settled rules which govern such motions and giving due force to the previous decisions upon this patent, this motion should be granted, unless the new evidence now presented by defendants" is so forceful as to' indicate that it would have defeated complainant if it had been presented in the former hearings. This new evidence is (1) the record of the application for the method patent, and (2) the prior British patent to the same patentees.

(1) The Method Application.

[1] The two applications on apparatus and on method were filed together. They were complementary to each other. The inventions were correlative. One sought to patent an apparatus which employed the method, and the other sought to patent the method which employed the apparatus. Passing by various distinctions which developed, and assuming for the present that they remained perfectly correlative, it resulted that the apparatus application was granted and ripened into the patent in suit, and that the method application after rejection was abandoned. It is now urged that thereby the main idea, the “soul of the invention,” was abandoned to the public.

I do not so understand the rule. The two things, method and apparatus, are distinct inventions. They may be patented by separate patents. The apparatus applicant may apply for the method, or he may not, as he chooses. If he applies for both in separate applications, he may change his mind, and withdraw or abandon either without affecting the other. The doctrine of the cases upon which defendants rely is that acquiescence in the rejection of a claim and acceptance of a grant with other claims estop the grantee from construing the grant as if it contained the claim rejected. This doctrine cannot apply to negotiations which did not mature into the grant of anything. The references and arguments which had more or less effect in inducing the abandonment are now important, not as an estoppel, but only on their merits; and on their merits they have been considered in the former decisions.

(2) The British Patent (No. 29,750 of 1896).

[2] The full term of this patent expired at the latest in December, 1910, and I assume (without consideration) that it was not affected by. article 4 bis of the Brussels Convention. Was it for the same invention as the patent in suit, so as to invoke section 4887, Rev. St. (U. S. Comp. St. 1901, p. 3382)?

The Leeds & Catlin Case, 213 U. S. 301, 29 Sup. Ct. 495, 53 L. Ed. 805, decides, as 1 read it, that a foreign patent for a method and a United States patent for an apparatus for practicing that method do not make a case under section 4887. The British patent, now involved, I think was a patent for the method. True, it discloses an apparatus, but so must a method patent usually do. Even claim 6 is not in terms of means. It is in terms of use, “the employment of, etc.,” and, taking title, description, and claims together, I call it a patent for the method or process.

[3] It follows that the injunction should be granted. However, the questions now raised are at least partly new to this litigation. The Court of Appeals or this court on final hearing may take a different view; and complainant should give security. In such a case, where an injunction closes down a business which is being established and which has good prospects but no long-settled basis, a bond, conditioned in the common form to pay such damages as defendants may suffer by the issue of the injunction, is not a real protection. The damages in such a case are likely to be serious and genuine, but largely or wholly incapable of proof. In such case the condition should be to pay a fixed sum which can fairly be estimated as the value of the business which is destroyed. An injunction here will continue for several months. It will destroy the defendants’ expected business for the current season, and make their investment largely worthless. I think it can fairly be anticipated that their damages by the issue of the injunction, if the injunction turns out to be wrongful, will be $5,000. Therefore the condition of the bond will be:

“Tliat if it shall, in such cause, be finally determined either that the patent sued upon was invalid or that the defendants were not acting in infringement thereof, the complainants will pay to the defendants the sum of five thousand dollars as and for liquidated damages caused by the issuing of such preliminary injunction; and also such damages, if any, caused thereby in excess of five thousand dollars as may be assessed by the court in this cause in favor of the defendants and against the complainants on account of the issuing of such injunction, such damages both liquidated and assessed excess to be subject to be ordered to be paid in the final decree in this cause, or by proceedings herein at the foot of the decree.”