Fulton Co. v. Bishop & Babcock Co. ( 1927 )

PER CURIAM.

After careful review, we are satisfied with the disposition of this case made by the District Judge, and approve his treatment of the questions involved. We have held the case an unduly long time, in the expectation that we would be able to give the case a somewhat independent treatment; but it seems impracticable to do so. We therefore approve the opinion below, in which will be found a full statement as to the patents and the questions involved.

Prom the fact that the product patent is held not infringed, we cannot draw the inference which the defendant now urges upon us. The new product which Pulton devised was a very thin and flexible metal bellows, made from a very thin walled metal tube, by known processes of working, then for the first time adopted for and adapted to the peculiarities of that problem; but to describe the px*oduet in this way is to import the process into the claims of the product patent, and for technical — and perhaps substantial — reasons such a method of description may not usually, if ever, be employed in a patent upon the article so produced. The result was that, in order to get an acceptable, identifying claim description for the product, Pulton was compelled to limit it to relatively immaterial physical peculiarities. This limitation now results in a holding that this patent is not infringed; but we do not see that this holding should have any reflex action, direct or indix’eet, upon the process patent.

One thing remains. The decree below, not only awax'ded an injunction against the further, practice of the process, but enjoined the sale of any article which had been made in infringement of this process patent. At the time of the decree- below, the patent had a relatively short time to run., It now has only six months. Defendant contends that this extension of the injunction, so as to forbid sales after the patent expires, of articles made before that time, extends the term of the patent, and is not to be permitted.

The precise point does not seem to have been determined; but it is fairly well settled that the patent upon an article will be enforced by forbidding sales, after the patent expires, of infringing articles made before-the expiration. The leading ease is Crossley v. Darby Co., 4 Law Journal (N. S.) Chancery 25. Lord Chancellor Lyndhurst said,— though doubtless obiter: “I am of opinion that the court would intex-fere, after a patent had expired, to restrain the sale of articles manufactured previous to its expiration in infringement of a patent right, and that a party would hot be allowed to prepare for the expiration of a patent by illegally manufacturing articles, and immediately after its expiration to deluge the markets with the products of his piracy, thus reaping the reward of his improbous labor in making it. The court would, I say, in such case restrain him from selling them, even after the expiration of the patent.”

This doctrine and the resulting one that infringing articles may, if necessary, be destroyed, has ever since been commonly accepted by courts and text-writers. American Co. v. Sheldon (C. C., Wheeler, D. J.) 1 F. 870; American Co. v. Rutland (C. C., Wheeler, D. J.) 2 F. 356; Toledo Co. v. Johnson Co. (C. C., Blatchford, Justice) 24 F. 739, 741; New York Co. v. McGowan (C. C., Nixon, D. J.) 27 F. 111; Underwood Co. v. Elliott Co. (C. C., Holt, D. J.) 156 F. 588, 590; Motion Co. v. Centaur Co. (D. C., Hunt, C. J.) 217 F. 247, 252; Robinson on Patents, § 908. But see Westinghouse v. Carpenter (C. C.) 43 F. 894. In Merrill v. Yeomans, 94 U. S. 568, 24 L. Ed. 235, the right of the manufacturers to sell the product, even during the patent term, was not involved; the defendants were purchasers from the makers.

• We see no reason why the same rule does not apply where the article has come into existence through infringing the monopoly of manufacture given by the process patent as well as when the infringement has been of the monopoly of manufacture given by the article patent. In the latter case, no violation of the patent law comes merely from selling the article after the patent expires; the violation is indirect; the basic reason of the result is that the article itself came into existence in violation of law. Its conception and birth were tainted. To permit it to be sold would be to impair the patent grant by shortening its term. Damages are not an adequate remedy, for the same reasons that always apply during the patent term. We see no distinction in the fact that the product patent whieh Fulton obtained did not cover this article. The rights of the infringer .of the process patent should not be increased because Fulton also obtained a product patent, which of itself was not very effective. We think the District Court was right in the effect directed for the injunction.

However, the case is one where the master should find and report, as a finding of fact, what a reasonable royalty would have been during the infringement, or from time to time during the infringement, so that the court will have the data for applying that measure of damages, if it shall decide that such measure is appropriate in whole or in part. A provision to this effect should be added to the decree, and, as so modified, it will be affirmed, with costs of this court. In view of the short time remaining in whieh an injunction against the process can be effective, the mandate will issue forthwith.