, and now finally, after further formal demand by the defendant that the plaintiff pay the back royalties, the plaintiff has filed this suit asking a decree to the effect that the contract is null and void and imposed no obligation on it in the past or for the future. This position is directly controverted in the defendant's answer which also sets up a counter-claim which seeks specific performance of the contract, and in the alternative, if the contract is not enforceable, then an injunction against and accounting by the plaintiff for patent infringement; but at the recent trial of the case the counter-claim was not pressed. The only question which is now presented is whether the plaintiff is indebted to the defendant for royalties accruing under the contract heretofore, and if so, whether the contract has now been terminated by the effect of the decision of this court on February 8, 1935 in the patent infringement suit of T.H. Symington Son, Inc. (the defendant in the present case) v. Symington Company, 9 F.Supp. 699, from the decree in which case the plaintiff therein did not appeal. That case involved the validity and scope of the Hankins patent above referred to. In the opinion in the case the patent was not held invalid but was given a narrow construction.
Defendant urges the similarity between this action and the Westinghouse decisions, on the one hand, and Frost Ry. Supply Co. v. T.H. Symington Son, D.C.D.Md. 1938, 24 F. Supp. 20 and T.H. Symington Son v. Symington Co., D.C.D.Md. 1935, 9 F. Supp. 699, on the other hand. T.H. Symington Son brought a patent infringement action against the Symington Co. In order to prevent a declaration of invalidity of Symington Son's patent, the court construed the patent narrowly and held that, as so construed, the patent was not infringed by the defendant's device.
Plaintiff's patent, narrowly construed, was held valid, but not infringed. (D.C.) 9 F. Supp. 699. The patent related to springs for railway cars.