
    NORTON et al. v. EAGLE AUTOMATIC CAN CO.
    (Circuit Court, N. D. California.
    November 27, 1893.)
    1. Patents — Injunction—Yiolatton—Contemtt.
    Violation of an injunction is not excused by tbe fact that the infringing machine is made according to a junior patent, for, on a question of infringement, such patent cannot be introduced, even as prima facie evidence of a substantial difference. Blanchard v. Putnam, 8 Wall. 420, applied. Truax v. Detweiler, 46 Fed. 118, and Harrow Co. v. Ilanhy, 54 Fed. 493. disapproved.
    2. Same — Infringement.
    Tiie Norton patent for a can-heading machine (No. 267,014) is infringed by a machine made according to the Merriam patent of June 3, 1884.
    In Equity. Proceeding to punisli defendant for contempt in violating an injunction issued in the suit of Edward Horton and Oliver W. Horton against the Eagle Automatic Can Company for infringement of letters patent Ho. 267,014, issued Hovember 7, 1882, to Edwin Horton, for a can-heading machine. Defendant adjudged guilty.
    For report of decision on motion for preliminary injunction, see 57 Fed. 929.
    Munday, Evarts & Adcock and Estee & Miller, for complainants.;
    John L. Doone, Pillsbury & Ilayne, and S. C. Denson, for respondent. :
   McKENNA, Circuit Judge,

(orally.) The plaintiffs’ patent is for[ applying, automatically and exteriorly, can heads to can bodies.1 It whs construed in Norton v. Jensen, 1 C. C. A. 452, 49 Fed. 859, very broadly, and held of a primary character; “standing,” to quote the court, “at the head of the art, as the first machine ever in-’ vented for applying tight exterior fitting can heads to can bodies automatically, and appellees are entitled to a broad and liberal construction of the claims of tbeir patent.”

The order of injunction was for the defendant, its agents and servants, to “absolutely desist and refrain from making, using, or selling any machine for putting on the ends of fruit or other cans which is an infringement of the claims of letters patent of the United States Ho. 267,014, granted to Edwin Horton on Hovember 7, A. I). 1882; also, from making or selling any machine for applying to can bodies heads fitting outside of the same, containing the combination of a device for sizing the exterior diameter of a can body to conform to the exterior diameter of the can head, and holding the same so sized while the head is applied; said sizing and holding device having its end enlarged to fit the exterior diameter of the can head so as to leave an annular space between it and the can body for the reception of the flange of the can head, with a device for forcing the can head into the said annular space, and thereby applying the head outside of the can body, — or any colorable imitation or evasion or equivalent thereof.” There was also a prohibition against using the above device in combination with other devices for delivering the can bodies to tbe beading machine. Of the latter kind was tbe machine especially enjoined.

Counsel for tbe defendant contend that tbe patent to Norton only covers tbe latter combination, tbe automatism consisting in not only applying tbe can beads to tbe bodies, but in delivering them, — in other words, an organized machine consisting, of a feeding device and a beading device. But tbe order of tbe court precludes this contention. It enjoins tbe use, as I have already quoted, of “tbe combination of a device for sizing tbe can body with a device for applying the can bead exteriorly,” and tbe order of tbe court seems to be justified by tbe first claim of tbe patent.

It is this part of tbe order with which we are now concerned, and tbe use of a machine containing tbe combination described in tbe order, or, to quote tbe order, “any colorable imitation or evasion or equivalent thereof,” is within its prohibition. Tbe defendant uses a machine made under a patent to O. R. Merriam, issued June 3, 'A. D. 1884. It is not necessary to explain tbe details of it. Considering tbe broad construction given to tbe Norton patent by tbe court of appeals in Norton v. Jensen, supra, I think it is infringed by tbe Merriam machine. But defendant contends, if this be made to appear after judicial inquiry and consideration, it is not obviously so, and that defendant is excused, by tbe fact of tbe patent to Merriam, and tbe advice of counsel, from a willful violation of tbe 'order of tbe court. Abstractly, it would seem that, if tbe plaintiffs’ patent was prima facie evidence of novelty, (difference from all things before it,) a.subsequent patent to the defendant, or for a device used by defendant, would be prima facie evidence of novelty, (difference from all things before it, and hence from tbe plaintiffs’ device,) and hence would be admissible in evidence on tbe issue of infringement, and its use would be innocent; and it was so held in Corning v. Burden, 15 How. 271. But this case was overruled in Blanchard v. Putnam, 8 Wall. 420. Tbe court said:

’ “What the jury have to determine is, does the machine of the .defendant infringe the machine of the plaintiff? And, if it does not, then the defendant is entitled to a verdict. But, if it does infringe the plaintiff’s machine, then the plaintiff is entitled to his remedy; and it is no answer to the cause of action to plead or prove that the defendant is the licensee of the owner of another patent, and that his machine is constructed in accordance with that patent.”

In both cases tbe patent under wbicb defendants, respectively, claimed was issued subsequently to those under wbicb plaintiffs, respectively, claimed. .

In Truax v. Detweiler, 46 Fed. 118, it was beld, on tbe authority of Onderdonk v. Fanning, 2 Fed. 568, that tbe issuing of a later patent is prima facie evidence that there are substantial differences between tbe devices describéd in tbe two patents; and, in tbe case cited from 2 Fed. it was decided that tbe new patent shows that tbe action of defendant was not so plainly colorable as to entitle plain: tiff to an attachment against tbe defendant for contempt. It was also held as late ,as March 2d of this year, in Harrow Co. v. Hanby, 54 Fed. 493, that, in a suit for infringement, tbe fact that tbe defendant’s machine is patented is prima facie proof that it does not infringe. To sustain this doctrine the court quotes Brown v. Selby, 2 Biss. 457, (a circuit court case,) and quotes Burden v. Corning, 2 Fish. Pat. Cas. 477, 497, which case, as we have seen, was overruled in Blanchard v. Putnam, supra. But the cases at circuit may be reconciled with Blanchard v. Putnam, applying them no further than affecting intention.

At any rate, I cannot say, in view of them and the advice of counsel, that defendant acted in willful contempt of the order of the court. In view, however*, of the construction of the Norton patent by the circuit court of appeals, and the decisions on it of the circuit court, I do not consider defendant blameless. It would have been more considerate to have taken the judgment of the court on the Merriam machine before using it, and risking disobedience of the order of the court and injury to plaintiff. Therefore, I think it should he punished by at least a nominal fine, and the cost of the proceedings.

The defendant is therefore adjudged guilty of contempt, and is fined the sum of five dollars, and ordered to pay plaintiffs the costs of this proceeding, including reasonable counsel fees.  