ANTISDEL v. CHICAGO HOTEL CABINET CO., 89 F. 308

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of the court. If considered as brought for the purpose of enforcing obligations of contract, the bill would have to be dismissed because it does not show the diverse residence and-citizenship of parties necessary to give the court jurisdiction. The contract alleged, however, is not one which could be specifically enforced, and, unless the suit is for an injunction against infringement of letters patent, no sufficient ground for equitable relief is stated.

The first proposition of the appellant — urged on the authority of Depeyster v. Graves, 2 Johns. Ch. 148; Duncan v. Finch, 10 Ill. 296; Woodworth v. Edwards, 3 Woodb. & M. 120, Fed. Cas. No. 18,014; 10 Am. & Eng. Enc. Law, 1019 — is that "the want of due diligence on the part of the complainant in prosecuting a suit in equity is always a cause for dissolving an injunction.” This proposition and the authorities cited, it is answered, are not applicable because in this case "there was nothing for the complainant to do * * after having obtained the preliminary injunction and default.

The object of the bill was to restrain a threatened infringement, and until there was an actual Infringement there was no occasion for taking any further steps in the suit.” The implication here that a temporary injunction may be the sole object of a bill is not true. Such relief is granted only as incidental and auxiliary to the final relief prayed, which, of course, may be only an injunction.

The appellee, therefore, had no right to rest upon the preliminary order and the decree pro confesso, unless there was an excuse for so doing; but if it be true, as upon the evidence the court may well have found, that the order for the injunction was entered wiih the knowledge of the appellant, and that when the agreement of July 30, 1894, was executed, it was the understanding of the parties (hat the suit should not be dismissed, and that the injunction should remain in force, that was sufficient excuse, so long as nothing Inconsistent with the understanding occurred, not only for the failure of the complainant to prosecute liis suit to final decree, but for the delay of the appellant to move for the dissolution of the preliminary order and writ of injunction; for, while a diligent prosecution is the duty of a complainant, it is also the rule Hint laches or unexcused delay of a defendant in moving for the dissolution of a preliminary injunction mav constitute ground for denying the motion when made.

High, Tnj. (3d Ed.) § 1480. Another objection urged to the granting of the injunction is that it was not: alleged nor proved that the validity of the patent had been adjudged, or that there liad been such public acquiescence as to make an adjudication unnecessary. We deem it a sufficient answer to this that the defendant, while engaged in Sidling the patented article, had been accustomed to represent to the public that the patent was valid. As against him, that was better proof of the validity of the letters than any ordinary evidence of public acquiescence could have been.

We do not assent, however, to the contention of counsel for the appellee, that by the agreements into which ihe appellant liad entered, and by what he did in performance of them, he became estopped to deny the validity of the patent. The first agreement, which by its terms .was limited to two years, had been continued in force, it is averred, by mutual consent, but not for any definite time; and, .manifestly, the appellant was at liberty to quit the agency whenever he should choose, and, in respect to his subsequent conduct or dealings, could be bound by no continuing estoppel dependent on the agreement.

If the suit were for an account of the proceeds of business done in the course of an agency, the doctrine of estoppel declared in the case cited of Kinsman v. Parkhurst, 18 How. 289, would apply; but the question here is whether one who has been under a contract of agency, determinable at will, to sell a patented article, if he discovers or concludes that the patent is invalid, may openly repudiate the agency, and, when sued for subsequent acts of infringe ment, may plead the invalidity of the patent as a defense. We know of no authority, and believe there is no sound reason, to the contrary.

The contract of July 30, 1894, was made after the suit was brought and the injunction issued, and, besides, is a contract to which the cabinet company is not a party, and in which it has no interest. It is a contract by which the principal stockholders stipulated with each other individually that, so long as they were stockholders, all business done by any of them in “the advertising business” in the United States or Canada should be done in the name of the company, and for the benefit of all the parties.

Whether Manly and Daily have themselves lived up to that contract, and under all the circumstances might be entitled to an injunction against Antisdel, forbidding the sale of advertising cabinets and of advertising privileges by him except in the name of the company and for the benefit of the parties to the agreement, could be properly determined in a suit brought by them against him for that purpose; but in this suit, to which they are not parties, it is not competent for the cabinet company to assert for its benefit their supposed rights under a contract to which it is neither party nor privy.

It has been suggested, but manifestly cannot be true, that merely because he is a stockholder in the cabinet company, the appellant may not deny the validity of a patent owned by the company. It follows that the question of the validity of the patent must be determined upon its merits, unaffected by estoppel or any consideration of personal equity. In answer to the objection that the patent is for an aggregation, it is insisted that the doctrine of aggregation does not apply, because the patent is not for a machine, which has a law of action, but is for an

article of manufacture, patentable for its peculiarities of construction “if each enters into the structure in such a way as to make it a new and useful device as a whole.” Even by this rule the cabinet in question was not patentable, because it contains many old features or parts which in no way contribute to the novelty of the device as a whole, and whatever novelty ( there is in it is confined to one or two features of construction.

But the proposition that the doctrine of aggregation is restricted in its application to machines as distinguished from articles of manufacture does not seem to be sustained by the decided cases. Hailes v. Van Wormer, 20 Wall. 353; Reckendorfer v. Faber, 92 U. S. 347; Trimming Co. v. Welling, 97 U. S. 7; Slawson v. Railroad Co., 107 U. S. 653, 2 Sup. Ct. 663; Bussey v. Manufacturing Co., 110 U. S. 146, 4 Sup. Ct. 38; Hill v. Wooster, 132 U. S. 693, 10 Sup. Ct. 228; Rob. Pat. §§ 154, 182, 185, note 1. See, also, Campbell v. Bayley, 18 U. S. App. 486, 11 C. C. A. 284, and 63 Fed. 463, and cases there cited.

Aside from the question of aggregation, this patent is invalid for the other reason urged that the device described is not an invention or discovery. To repeat the language used in Campbell v.

Bayley, supra: “Whether, -within the meaning of the patent law, a device should be deemed a manufacture or a machine, in .order to be-patentable it must be novel; and by the decided cases the test of novelty would seem to be essentially the same in the one instance as in the other. ‘Nothing short of invention or discovery will support a patent for a manufacture, any more than for a,n art, machine, or composition of matter,’ said Justice Clifford, in Milligan & Higgins Glue Co. v. Upton, 4 Cliff. 237, 251, Fed. Gas. No. 9,607; and the same expression is repeated in Collar Co. v.

Van Dusen, 23 Wall. 530, 563, in context with the following pertinent statement: ‘Articles of manufacture may be new in the commercial sense when they are not new in the sense of the patent law. New articles of commerce are not patentable as new manufactures, unless it appears in the given case that the production of the new

article involved the exercise of invention or discovery beyond what was necessary to construct file apparatus for its manufacture or production.’ ” This patent perhaps shows some features not before combined in exactly the same way, but “it is not enough that a tiling shall be new in ihe sense (hat in the shape or form in which it is produced it shall not have been before known, and that it shall be useful, but it must, under the constitution and the statute, amount to an invention.” Thompson v. Boisselier, 114 U. S. 1, 11, 5 Sup. Ct. 1042.

It is suggested 1hat the margin of invention is certainly as great in this as in the recent ease of Williams v. Wrapper Co., 30 C. C. A. 318, 86 Fed. 641, decided by this court. But it is only necessary to refer to ihe opinion there delivered for the clear distinction between the cases.

It was there said of ihe Williams’ invention, but cannot be said of the device now in question; "it is different from anything before it, and is not an obvious or natural suggestion of what had preceded it in the art. * * * Simple as it is, it was a happy thought, and we hold it to have boon a patentable discovery, because it was not directly suggested by anything which preceded it in the art to which it belongs, and was not fairly or logically deductible from any or all of the prior forms of construction.” These expressions were carefully framed, and are believed to embody an accurate statement of the general rule by which, in respect to novelty, Hie patentable and the unpatentable are to be distinguished. , The decree below is reversed, with direction to dismiss the bill.