Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co.

WALLACE, Circuit Judge

(dissenting). This case presents in my view an utterly unwarranted attempt on the part of the complainant to enlarge the monopoly which it has acquired as the owner of the patents in suit, and to dominate exclusively the manufacture and sale of articles Avhich its patents do not cover, and which others have a legal and moral right to make and sell. The preliminary injunction by which the defendants are restrained from making or vending their trolley stands was granted without a particle of evidence that they had ever infringed any of the claims of the complainant’s patents, and, as I think, without the slightest evidence that they threaten to do so. They are as much entitled to make and sell their trolley stands as they are to make and sell the rails, the poles, the wires, the screws, the paint, or any other *1011 article which, may be required for use by those who owu and operate electric railways in which the improvements covered by the patents of the complainant are utilized. The country is crowded with electric railways which utilize these improvements, but the improvements do not consist in the trolley stand. They consist in various combina (ions of parts, of which a trolley stand, in some form, is one. These railways are generally owned and operated by corporations, a great number of which buy their outfit from the complainant, and thereby acquire the right to use the patented combinations during the life of the organized parts. Coneededly, they have a. right to repair their trolley stands, to substitute new ones for those old or worn out, or to substitute a better and improved kind for those originally bought of the complainant. The defendants have an equal right, to make and sell the stands to such owners for that purpose.

The injunction was granted upon the theory that a case of contributory infringement had been shown. The only evidence of contributory infringement consists in the fact that the defendants are making, advertising, and selling their trolley stands to the public. That they are concerting with infringers, with a view to assist them in appropriating without compensation the inventions patented by the complainant, there is not a particle of evidence. Being entitled to sell their article, they are under no obligation, before selling it, to inquire whether the purchaser intends to make an illegal use of it. Privity with a wrongdoer is not to he inferred from the exercise of a legal right. The man who sells a gun or a knife would he guilty of an impertinence if he should inquire of the purchaser whether he intends to use it legitimately, and is under no duty to do so. The same rule applies to one who malíes or sells an article which is not patented, but which may he used b,v the purchaser to work an infringement of a patent if lie so chooses. One who assists another to inflinge a patent is, of course, a tort feasor; and whether he is called a contributory infringer, or merely an infringer, is only a matter of nomenclature. But he does not assist or concert with another to infringe merely because he sells him an article which may he used to effect an infringement. In other words, participation in a wrong is not. established by doing a lawful act, without evidence of an unlawful intention.

I think the order granting the preliminary injunction should be reversed.