
    IMPERIAL MACHINE COMPANY v. THE UNITED STATES
    [No. C-350.
    Decided May 9, 1927]
    
      On the Proofs
    
    
      Patents; vegetahle-peeUng machine. — See Imperial Machine & Foundry Corporation v. United States, ante, p. 507.
    
      The Reporter’s statement of the case:
    
      Messrs. Ralph M. Swyder and Marvin Farrington for the plaintiff. Mr. Wallace R. Lme and Rung <& King were on the briefs.
    
      
      Mr. J. F. Mothershead, with, whom was Mr. Assistant Attorney General Herman J. Godloway, for the defendant. Mr. H. E. Knight was on the brief.
    The court made special findings of fact, as follows:
    I. The Imperial Machine Company, plaintiff herein, was a corporation organized- under the laws of the State of New Jersey, with its principal place of business at Lindenhurst, Long Island, State of New York. On or about September 27, 1911, the said corporation sold its entire business and assets, including all its patents, among them Letters Patent No. 809582, hereinafter described, to the Imperial Machine & Foundry Corporation, a corporation organized under the laws of the State of New York. The charter of the said Imperial Machine Company was revoked by the Secretary of State of the State of New Jersey on or about the 28th day of January, 1918, for nonpayment of taxes due said State, but said corporation retains its corporate existence for the purposes of this suit.
    II. On January 7, 1905, Henry Eobinson, 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 Eobinson assigned his right, title, and interest in and to the said patent to the Eobinson Machine Company, a corporation of the State of New Jersey.
    On December 28, 1906, the Eobinson Machine Company assigned its right, title, and interest in and to said patent to the Imperial Machine Company, plaintiff herein.
    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. 115264 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 De Bonneville.
    United States No. 782852 to Xmm.
    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 neces1-sary 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 sold them throughout the United States and in foreign countries, and continuously, since the issuance of the said patent, marked the said machines with the date and number of the said patent.
    YI. The several and successive owners of the said patent have never granted licenses to make, use, or vend the device covered thereby.
    VII. On numerous occasions from the year 1906 to the time it sold its business and assets the plaintiff prepared and sent circulars to persons, firms, and corporations, including the makers and sellers of the “ Sim-Peel-0 ” machine, hereinafter referred to, warning them not to make, sell, or use apparatus infringing plaintiff’s aforesaid patent, and has 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, and warned them not to purchase machines that infringed the same.
    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.”
    The said “ Sim-Peel-0 ” machine 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 for injunction and accounting against the manufacturers and sellers and some users of the said “ Sim-Peel-0 ” machines and decrees obtained therein sustained the validity of Letters Patent No. 809582, holding said “ Sim-Peel-0 ” 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 said manufacturers any damages or profits as a result of the said litigation.
    IX. One of the distributors of the “ Sim-Peel-0 ” machines was Albert Pick & Company. The plaintiff’s successor in interest, the said Imperial Machine & Foundry Corporation, executed and filed a release and waiver in Equity Suit No. 2636 in the United States District Court, Northern District of Illinois, Eastern Division, entitled Imperial Machine c& Foundry Corporation v. Albert Pick ds Compcmy, containing the following:
    “ Now, therefore, in consideration of the sum of twenty thousand ($20,000) dollars in hand paid, the receipt of which is hereby acknowledged, the plaintiff, Imperial Machine & Foundry Corporation, hereby releases and entirely relieves the defendant, Albert Pick & Company, and all sellers and users of the vegetable-peeling and paring machines held to be an infringement of said patents sold by said Albert Pick & Company previous to November 19, 1923, from any and all claims for profits and damages of every nature whatsoever which have arisen or may arise out of said Albert Pick & Company’s sale or use of said infringing vegetable-peeling or paring machines, or by the use of said infringing vegetable-peeling or paring machines by others who have purchased said machines; and agrees to discontinue the accounting proceeding pending relative thereto.
    “ This release does not in any wise relieve the party or parties manufacturing said infringing vegetable-peeling or paring machines, whether sold to Albert Pick & Company or otherwise, from full responsibility for their infringing acts in connection with their manufacture and sale of said infringing machines * * *
    “ Said Imperial Machine & Foundry Corporation will and does hereby release all Government agencies purchasing such infringing machines from Albert Pick & Company previous to November 19, 1923, and will remit in any suit now pending against the Government or any of its agencies, any claim for damages or profits arising out of the use of any of said infringing machines thus purchased from Albert Pick & Company.”
    X. There is no satisfactory proof that the defendant has purchased, received, or used any of the said potato-peeling machines known in the trade as “ Sim-Peel-O,” containing abradant' disks of the kind and character described in plaintiff’s said patents, or that any of them have been manufactured by or for the United States.
    The court decided that plaintiff was not entitled to recover.
   GRaham, Judge,

delivered the opinion of the court:

This is one of five cases between the same parties involving the validity and infringement of Letters Patent 809582 and 942932, the property of the plaintiff. The question of the validity of these patents has been discussed and passed upon in the opinion filed by the court in No. C-320, handed down this day (cunte, p. 491), so that it is unnecessary to consider this question again. Inasmuch as the court has found that there is no proof of infringement by purchase and use by the defendant it is unnecessary to consider the question of infringement. The petition should therefore be dismissed, and it is so ordered.

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