Phillips v. The City of Detroit.

ent has been upheld by the decisions of at least two courts before the commencement of this suit, a fact which is, in ordinary cases, sufficient to authorize a preliminary injunction. If, in the meantime, respondents had become satisfied that it was invalid, the proper procedure was to make a showing of this fact and apply for a dissolution. If the court had jurisdiction to issue the writ, it should be obeyed until it is dissolved. I should feel no hesitation, however, in passing upon the validity of this patent, so far as any defenses may exist which were not brought to the attention of the circuit judge upon the original hearing.

Had respondents simply carried out the contracts made by them for paving the streets in question, I should have felt little difficulty in holding them innocent of any violation of this writ. The claim of the complainants' patent is in the following words:

What I do claim as my invention, and desire to secure by letters patent, is

A wooden pavement composed of blocks of any desired wood, cut from the trunks or branches of trees or saplings, of any desired length, in their natural form, the bark only being removed, placed with their fibres vertical, upon a bed of broken stone and gravel or sand, or either of them the spaces between the blocks being filled with gravel or sand, the whole made compact by ramming, rolling, or other proper method, as herein shown and described.

In his specification he says distinctly that he does not claim, broadly, the use of wooden blocks in the state in which they are cut from the tree or branches, nor the foundation of stone or gravel, nor the filling of the spaces between the blocks with sand or gravel, separately considered. In other words, he claims a combination, but not the separate elements of the combination.

A party may lawfully use wooden blocks in their natural form, or the foundation or filling of stone or gravel, but he

Phillips v. The City of Detroit.

cannot use them both without being guilty of an infringement. The specifications of the contracts made by respondents called for the use of "blocks, stripped of bark, of irregular or octagon shape, sawed from cedar timber," a material departure from the wooden blocks cut "in their natural form," as specified in complainant's claim. This was evidently the theory of the city counselor, who, in his affidavit, states that after the service of the injunction he advised the Board of Public Works "that no more pavement which they had been laying, known as the round cedar-block pavement, could be laid while said injunction remained in force; that thereupon it was proposed to split and divide the round cedar blocks, and make them into irregular shapes, and not use the block in its natural form;" and that he advised the board that such use would not be an infringement of the complainants' patent; and the printed forms of contract which had been previously used, and which provided for blocks of a "round cylindrical shape," were changed so as to require the use of blocks of irregular and octagon shape.

The difficulty is, that while his advice was followed in making the contracts, it was disregarded in laying the pavements. The actual block laid was cut from the trunks and branches of trees or saplings in its natural form, precisely as is claimed in complainant's patent, except that a segment of from half an inch to one and a half inches in thickness was split from one side of each block. I regard this as plainly a subterfuge. The slicing off of this strip did not materially change the forins of the blocks, and was of no possible utility in laying the pavement. It was, perhaps, intended to be a compliance with the advice of the city counselor that the blocks must be split and used in an irregular shape in order to avoid the patent. But nothing is better settled in the law of patents than that identity is not affected by colorable differences, that regard is had to substance and not form, the

Phillips v. The City of Detroit.

inquiry being whether the infringing machine is the same in principle as that patented. Curtis on Patents, 309; Seymour v. Osborne, 11 Wall. 516.

I do not think the affidavit of the respondents exonerates them from a participation in this infringement. They swear that the inspectors were instructed by them that the blocks must not be used nor laid in their natural form; that such blocks must be split and their form made irregular, and that no round block in its natural form must be accepted, and that the patent of complainants must not be infringed; that whenever they discovered blocks in their natural form being used they ordered them taken up; and that if any pavement was laid in violation of the injunction, it was so laid contrary

to their directions.

It is, however, the duty of the Board of Public Works to supervise the grading and paving of all streets. Session Laws of 1873, vol. 3, 178, sec. 8. In their affidavit they admit they reported to the Common Council that the contracts had been performed and the work accepted, but claim they did so upon the report of the inspectors having charge of the work that the same was done according to the several contracts therefor, and that if the contractors laid the pavement in such manner as to violate the injunction, it was done without their knowledge, and that the acceptance of such pavement was not a violation on their part of the injunction, when the same was laid without their knowledge and consent. But their affidavit is not inconsistent with a knowledge upon their part that the only alteration of the wooden blocks consisted in splitting off the strip, as above specified. This was a nominal compliance with their instruction not to use the block in its natural form, but to split it, and possibly they may have considered that this was sufficient to avoid the patent; but if they accepted anything less than the literal performance of the contract, requiring the blocks to be cut

Phillips v. The City of Detroit.

in an irregular or octagon shape, they did so at the peril of violating this injunction.

In view of their duties, in connection with the paving of the public streets, to supervise the work and to report the completion of the contract to the council, and also in view of the fact that in the performance of these duties they could scarcely have been ignorant of the manner in which these pavements were being laid, I must hold them chargeable with knowledge of and participation in the violation of this injunction committed, in the use of this evasive block. To render them liable it is not necessary they should have actually committed the breach in person; but if they were present, aiding and abetting the commission of the act, prompted it to be done by other persons, or, having charge of a public work like this, permitted their contractors to depart from the letter of the contract, and accepted the report of the inspectors with approval of work so done, they are liable for an infringment and guilty of disobedience to the writ. High on Injunctions, sec. 861; Blood v. Martin, 21 Geo. 127; Stimpson v. Martin, 41 Vt. 238; St. John v. Carter, 4 Myl. & Cr. 497. Even if the city counselor had advised the use of this particular block, (which he does not seem to have done,) or respondents had acted conscientiously and in good faith, it would be no justification, though the court might consider these facts in fixing the penalty. High, secs. 849

and 851.

I do not regard the fact that the complainants, Farwell & Robinson, may have been interested in paving certain streets, as estopping them from setting up a violation of the injunc tion by respondents in paving other streets. They would undoubtedly have a right to take a contract directly for the paving of Woodward Avenue, for instance, without thereby assenting that other parties should pave Jefferson Avenue with their pavement. Indeed, the very object of this, as of

Phillips v. The City of Detroit.

all other patents, is to enable the patentee to maintain a monopoly of laying his pavement during the life of the patent. The estoppel would extend no farther than to prevent them claiming an infringement in respect to the particular streets which they were interested in paving. They make no claim for either of these streets.

Complainants' counsel insists with great earnestness that, instead of imposing a fine upon respondents for a violation of this injunction, the court should require them to pay to complainants a sum sufficient to indemnify them for the actual loss or injury that has been produced by the infringement, viz.: their usual royalty of sixteen cents per square yard. Without determining whether the court has power make this order in the absence of a statute to that effect, (although the authorities would seem to sustain complainants' view upon this point,) it is clearly a matter of discretion. I think the penalty should not be imposed in this case, for the following reasons:

to

1. While the violation of the injunction was willful in the eye of the law-i. e., intentional-it was not willful in any odious acceptation of the term. The respondents were acting in an official capacity in the discharge of a public duty, and derived no personal benefit whatever from the infringement. They may possibly have believed that they were following the advice of the city counselor, and were not, in fact, violating the injunction.

2. The complainants will derive no benefit from the immediate payment of the royalty. The city is amply responsible for any decree they may finally recover, and interest will follow upon the ascertainment of the amount.

3. If this order were made respondents would be obliged to pay sixteen cents per yard royalty upon eighteen thousand three hundred and twenty-nine yards of pavement already laid, and fifteen thousand one hundred and eighty-one yards