Seim v. Hurd/Opinion of the Court
Hurd, a licensee for a limited territory under the Grant patent for rubber tires, joining with him the legal owner of the patent and the holder of an exclusive license subject to the rights of Hurd and another, brought suit against Seim and Reissig, for infringement. It is stated that the defendants purchased the infringing tires from the Diamond Rubber Company of New York, and, also, that it is the contention of the defendants that these tires were bought by the Diamond Rubber Company from the Kokomo Company. The patent had been sustained in a suit against the Diamond Rubber Company (89 C. C. A. 582, 162 Fed. 895, 220 U.S. 428, 55 L. ed. 527, 31 Sup. Ct. Rep. 444), but by a provision in the final decree there was excepted from the operation of the injunction tires manufactured by parties to other suits in which the patent had been declared invalid, naming, among others, the Kokomo Company.

The further statement of the certificate, however, makes it plain that the defendants did not purchase the patented structure, but made it themselves. The statement is that 'such tires' (referring to those purchased by the defendants) 'were delivered to defendants at the city of New York, and then taken to Albany, complainant Hurd's territory, and the rubber, metal channel, and retaining wires were there assembled and attached to the wheel rim by defendants, and not by the Kokomo Company or the Diamond Rubber Company of New York.'

The elements in the Grant structure were old. There had been previous combinations of rubber, metal channels, and retaining wires in the effort to produce a successful rubber tire (220 U.S. pp. 438, 439). The claims of the Grant patent were narrow and were limited closely to a specified combination which, through the co-operation of the various parts, when these were correlated in the precise adjustment described, produced a new and useful result.

It is thus apparent that the defendants themselves constructed the device, effecting that union of the separate elements which alone could bring the structure within the patent claims. In this aspect, it is immaterial from whom they bought the rubber or the wires or the channel. It is not the case of the purchase of the article in question from one who had a right to sell. There was no actual infringement until they made the trie, and for their act in making it they could not escape liability by the purchase of parts from others. See Rubber Tire Wheel Co. v. Goodyear Tire & Rubber Co. decided this day [[[232 U.S. 413]], 58 L. ed. --, 34 Sup. Ct. Rep. 403].

None of the questions certified is apposite to the facts as we understand the certificate to state them. It may have been the intention by the use of the words 'infringing tires' in the first, second, and third questions to refer to the rubber stock only. It seems to be conceded in the arguments of both parties that the rubber alone is made by the Kokomo Company. But the questions, as put, are not raised by the case made, and for that reason they must go unanswered. Neither the right of the Kokomo Company to make the Grant structure, nor the right of a purchaser or user of that structure, if made and sold by the Kokomo Company, is involved.

'If the Kokomo Company is immune in making the infringing rubber, which is only one element of the combination of the patent, are its customers, who purchase the rubber of the Kokomo Company and the metal rims and retaining wires of other parties, and sell them, to be assembled upon wheel rims, making the completed structure of the patent, also immune from prosecution?'

A similar question is answered in the case of Woodward Co. v. Hurd, decided this day [[[232 U.S. 428]], 58 L. ed. --, 34 Sup. Ct. Rep. 409], but it is not presented by the facts of the present case. There is no suggestion that the defendants here purchased the various parts and sold them to be assembled by their customers, but, on the contrary, as we have said, the defendants made the structure themselves.

In view of the form of the questions, the certificate must be dismissed.

Dismissed. 

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