
    JOHNSON RAILROAD SIGNAL CO. v. UNION SWITCH & SIGNAL CO.
    (Circuit Court of Appeals, Third Circuit.
    April 17, 1893.)
    1. Patents jj'Qr Invention»-Ikfringbmknt- -What Constitutes Salk.
    • A railroad company had acquired by license from the patentee the right to make and use patented signals on Its lines, and it contacted "with defendant, a switch and ¡signal company, to make and erect them for a stipulated compensation, which defendant accordingly did. Meld, that this wao not a ¡¡ale of Jhe patented device by defendant, and hence it did not constitute infringement. 52 Fed. Hop. 807, reversed.
    Ü. Saw, — Threat to Ikketag-e.
    Another railroad company advertised for proposals to furnish materials and do certain work on its line, which Included furnishing and erecting Buck patented signals. 'Deieiidant offered to do the work, and furnish every tiling required except «he signals, representing fruit these could bo obtamed for about $500 additional. The railroad company declined tills offer, and defendant then proposed to furnish these signals for the additional 8500; tout a tew days later it withdrew the proposal field, that this was not such a threat to Infringe the patent as to warrant an injunction; for the presumption Is ¿hat defendant intended to procure the signals by lawful means.
    Appeal from the ’Circuit Court of the United States for the District of 'New Jersey.
    In Equity. Bill by the Union Switch & Signal Company against the Joliuiion Railroad Signal Company for infringement of a pa ton L There was a. decree for complainant, (82 Fed. Rep. 867,) and defendant appeals.
    Reversed.
    Edwin, II. Brown, for appellant
    J. Snowden Bell, for appellee.
    Before AOHEmOLT, Circuit Judge, and BUTLER and WALES, District Judges.
   BUTLER, District Judge.

The only questions presented by the charge of infringement, which is based on alleged sales to the Boston & Albany Railroad Company, and an alleged' offer to sell to the Old Colony Railroad Company, of Massachusetts. We do not think either allegation is sustained by the proofs. assignments of error, requiring consideration, grow out of the

As? respects the first, the facts are that the railroad company, first named, hawing acquired a right by license to make and use the signals on its lines, contracted with the appellant to make ami erect them for a stipulated compensation; and that the la tier did make and erect them accordingly. This was not a, violation ©£ the appellee's rights. The appellee, however, claims that it was, because the transaction, as if thinks, constituted a sale within the meaning and prohibition of the patent laws. A contract to make and deliver specified articles for a given sum, is field under tfie statute of frauds not to constitute a sale, but simply an agreement for materials and labor. Mixer v. Howarth, 21 Pick. 205; Spencer v. Cone, 1 Metc. (Mass.) 283; Goddard v. Binney, 115 Mass. 450. It is unimportant fiere, fiowever, by wfiat name tfie transaction is designated. No injury resulted to tfie appellee. Tfie appellant did for tfie railroad company, at its instance, only wfiat tfie latter fiad a right to do under its license. Tfie suggestion tfiat it could not employ others to make tfie signals for its use, but must make them itself at its own shops, by its own workmen, is unwarranted by anything found in tfie license, or elsewhere. As it fiad a right to make them tfie appellee is not interested in tfie place or manner of its exercise. Nor is there any support for tfie suggestion tfiat tfie appellee is entitled to a profit on tfie manufacture. Tfie right to such profit- passed with tfie license, irrespective of tfie individual who might do tfie work.

As regards tfie alleged threat, we find nothing in tfie proofs to sustain tfie allegation. It appears tfiat tfie Old Colony Railroad Company advertised for proposals to furnish, materials and do certain work on its line, which included furnishing and erecting these signals. Tfie appellant offered to do tfie work and furnish everything required except tfie signals; representing tfiat these could be obtained for about $500 additional. Tfie railroad company declined tfie offer thus made; and tfie appellant then proposed to furnish tfie signals for tfie additional sum .named. A day or two later, fiowever, it withdrew tfie proposal. There is nothing in this to justify a belief tfiat the appellant contemplated an infringement of tfie patent. Tfie only justifiable inference from its offer to furnish tfie signals is tfiat it intended to procure them from some one authorized to sell, or- by other lawful means. But in any view of tfie transaction it does not show such a threat, to infringe, when tfie bill was filed, as justifies an injunction. There is no evidence tfiat it fiad tfie signals on hand for sale, or contemplated having them. „

Tfie decree must, therefore, be reversed, with, directions to dismiss tfie bill.'  