
    IMPERIAL MACHINE & FOUNDRY CORPORATION v. THE UNITED STATES
    [No. 34453.
    Decided May 9, 1927]
    
      On the Proofs
    
    
      Patents; vegetable-peeling maclvme. — See Imperial Maclvme & Foundry Corporation v. United States, ante, p. 491.
    
      The Reporter's statement of the case:
    
      Messrs. Ralph M. Snyder and Marvin Famrington for the plaintiff. Mr. ’Wallace R. Lame and King & King were on the briefs.
    
      Mr. J. F. Mothershead, with whom was Mr. Assistant Attorney General Herman J. Galloway, for the defendant. Mr. H. E. Knight was on the brief.
    
      The court made special findings of fact, as follows:
    I. The Imperial Machine & Foundry Corporation, plaintiff herein, is a corporation of the State of New York, having its principal place of business at Lindenhurst, Long Island, State of New York.
    II. On January 7, 1905, Henry Robinson, a citizen of the United States, applied to the Commissioner of Patents for a patent on a machine for peeling vegetables, and on this application Letters Patent No. 809582 were issued to him January 9, 1906: A copy of the specifications of the said letters patent and drawings annexed thereto is attached to the petition as “ Exhibit A” and made a part of this finding by reference thereto.
    On January 16,1906, the said Robinson assigned his right, • title, and interest in and to said patent to the Robinson Machine Company, a corporation of the State of New Jersey.
    On December 28, 1906, the Robinson Machine Company assigned its right, title, and interest in and to said patent to the Imperial Machine Company, a corporation of the State of New Jersey.
    On September 27, 1917, the Imperial Machine Company sold its entire business and assets, and assigned all its patents, including Letters Patent No1. 809582, to the Imperial Machine & Foundry Corporation, plaintiff herein. Said assignment contained a provision that the assignee should have “ the right to sue for and recover damages and profits in its own name for any and all past infringements of said letters patent.”
    III. Prior to January 7, 1905, the date of filing the application for said letters patent, there were in the art relating to potato and vegetable-peeling machines the inventions and devices illustrated and described by the following letters patent:
    United States No. 91238 to' Lehman.
    United States No. 100348 to Williams.
    United States No. 115265 to Mayhew.
    United States No. 119746 to Culver.
    United States No. 129741 to Loy & Baker.
    United States No. 223056 to Mills.
    
      United States No. 237599 to' Raymond.
    United States No. 293047 to Mackey.
    United States No. 336533 to Sylvester.
    United States No. 524420 to Jaeger.
    United States No. 551526 to Buist & Schmidt.
    United States No. 686576 to Blache.
    United States No. 777590 to DeBonneville.
    United States No. 782852 to Imm.
    United States No. 860349 to Brenizer.
    British No. 10325 to De Pass, issued 1886.
    British No. 5435 to Schulte, issued 1886.
    British No. 3040 to Lowe, issued 1894.
    IY. The machine illustrated and described in the said Letters Patent 809582 consists of a cylinder at the bottom of which is mounted a rotary disk having an abrading striated surface provided with one or more rounded humps or raised portions which slope from the circumference of the disk toward the main portion thereof. The function of the rounded and sloping humps is to produce the necessary agitation and circulation of the mass of vegetables whereby all the vegetables are brought into contact with the abrading disk for the proper length of time to peel them.
    V. The plaintiff and its predecessors made paring machines according to the design covered by the said patent, and have sold them throughout the United States and in foreign countries, and have continuously, since the issuance of the said patent, marked the said machines with the date and number of the said patent.
    VI. The several and successive owners of the said patent have never granted licenses to make, use, or vend the device covered thereby.
    VII. The plaintiff and its predecessors have on numerous occasions from the year 1906 to the fall of 1923 prepared and sent circulars to persons, firms, and corporations, including the makers of the “ Economical ” machine, hereinafter referred to, warning them not to infringe plaintiff’s aforesaid patent or buy or use infringing apparatus, and have also verbally and in writing repeatedly and continuously during said period informed purchasing officers of various departments, bureaus, and independent agencies of the United States Government of plaintiff’s rights under the said patent. Some of the Federal officers so informed and warned were Paymaster General McGowan, U. S. N.; John Hancock, chief purchasing officer, Bureau of Supplies and Accounts, U. S. N.; Assistant Paymaster General Peoples, U. S. N.; Chief Purchasing Officer Cobey, Bureau of Supplies and Accounts, U. S. N.; and the purchasing officer for the United States Navy at Great Lakes Naval Training Station.
    VIII. Since the year 1916 certain persons, firms, and corporations have been making and selling potato-peeling machines under trade names, respectively, of “American,” “ Sim-Peel-O,” and “ Economical.”
    Each of the said “ Economical ” machines contained as its essential part an abradant disk of the kind and character illustrated and described in the specifications and drawings of said Letters Patent No. 809582.
    Suits were brought by the plaintiff or its predecessors for injunction and accounting against the manufacturers and sellers and some users of the said “ Economical ” machines and decrees obtained therein sustaining the validity of Letters Patent No. 809582, holding the disk contained in said “ Economical ” machine to' be an infringement thereof, and awarding profits and damages. Owing to the insolvency of the defendants, neither plaintiff nor its predecessors have received from the manufacturers or sellers and has used some as a result of the said litigation.
    IX. Since 1916 the defendant has bought for its use and received from the manufacturers or sellers and has used some of the said “ Economical ” machines with the said infringing abradant disk. There is' no proof of the number of said machines and disks so purchased, received and used, nor of the specific dates of purchase, receipt and use.
    The court decided that plaintiff was entitled to recover.
   Graham, Judge,

delivered the opinion of the court:

This case involves the questions of the validity and infringement of plaintiff’s patent No. 809582, and is ruled by the case of Imperial Machine & Foundry Corporation v. United States, No. C-320, this day decided, ante, p. 491.

The owners of this patent have found it necessary to litigate and relitigate their rights in the courts, and the plaintiff and its predecessors from the year 1906 to the fall of 1923 prepared and sent circulars to persons, firms, and corporations, makers of the “ Economical ” machine, hereinafter referred to, warning them not to infringe the plaintiff’s patent or to buy or use infringing apparatus, and also verbally and in writing repeatedly and continuously during this period informed the purchasing officers of the various bureaus and independent agencies of the United States Government of the plaintiff’s rights under said patent.

This case covers claims connected with the purchase and use by the defendant of infringing machines known as the “ Economical ” machine and involving the said patent No. 809582. This “ Economical ” machine was held to be an infringement of plaintiff’s patent on March 3, 1919, in the case of Imperial Machine Co. v. Rees & Stindt Machine Works and Belding & Franklin Machine Co. in equity No. 15-305, United States District Court for the Southern District of New York. The case was decided by Judge Hand without an opinion. This suit was afterwards consolidated with the suit of the Imperial Machine Co. v. Metropolitan Life Insurance Co., 261 Fed. 612, involving the use of the said “ Economical ” machine, and in quite a full opinion Judge Mayer held it to be an infringement of the plaintiff’s patent No. 809582.

It must therefore be held that the purchase and use of the “ Economical ” machines by the Government would render it liable for damages, and the court has found that the defendant did purchase and use said machines, and the case is remanded for further proceedings on the question of the amount of damages for infringement.

Moss, Judge; Hay, Judge; Booth, Judge; and Campbell, Chief Justice, concur.  