[*1283] JOSEPH S. LORD, III, CH. J.
Plaintiff in this patent infringement suit is the holder of United States Patents Nos. 3,386,705 and 3,791,593 for a composting machine and certain parts of composting machinery, respectively. Defendant, which has counterclaimed for declaratory judgment with regard to the patent suit and for breach of contract, now moves for partial summary judgment on the infringement claims and on its counterclaim for declaratory judgment of non-infringement. Accepting as the factual record the account of events presented by the defendant in its affidavits and exhibits, we find the defense to infringement deficient as a matter of law and will deny the motion.
The plaintiff holds patents for these inventions in Italy as well as in the United States. He had granted before 1975 an exclusive license to Longwood Manufacturing Corporation [**2] to make, use and sell the patented composting machine in the United [*1284] States, and he granted on July 28, 1975, an exclusive license to Celeste Carminati to practice in Italy and in other European Economic Community nations the art patented under the laws of Italy. The defendant's president purchased a composting machine from Carminati, f.o.b. Genoa, in late 1975, and the defendant purchased two more machines from Carminati in 1976, f.o.b. Genoa. The defendant, a mushroom grower and supplier of equipment and materials to mushroom farmers in Pennsylvania, has used the first-purchased of these composters in its own business and has sold the other two. Infringement of the United States patent is alleged on the basis of the use and sale of these three machines.
Defendant concedes for purposes of this motion that the United States patents in suit are valid and enforceable, that the three machines embody the patented inventions and that the plaintiff had granted an exclusive licensing agreement for practicing them in this country. It has advanced two legal grounds for this motion, both of which rely on its purchase of the machines in Italy from Carminati to defeat [**3] the plaintiff's infringement action.
The defendant's first contention is that its purchase of the machines from Carminati, who was authorized under Italian law to sell them, released these articles from the patent monopoly. In support of this argument the defendant relies on the clear and indisputable proposition that "upon familiar principles the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold." United States v. Univis Lens Co., 316 U.S. 241, 249, 86 L. Ed. 1408, 62 S. Ct. 1088 (1942). See also Adams v. Burke, 84 U.S. 453, 21 L. Ed. 700 (1873); Bloomer v. McQuewan, 55 U.S. 539, 14 L. Ed. 532 (1852). In effect, the defendant seeks to extend beyond national borders the rule in Univis Lens Co. concerning escape from the patent monopoly by purchase from an authorized seller.
We find this case to be controlled by the decision in Boesch v. Graff, 133 U.S. 697, 33 L. Ed. 787, 10 S. Ct. 378 (1890). There Graff, who held patents relating to lamp burners both in this country and in Germany, sued the defendant Boesch for infringement of the United States patent [**4] by selling infringing burners in the United States. Boesch defended on the ground that he had bought at least some of the burners in Germany from one Hecht before importing them into the United States. The Supreme Court acknowledged that Hecht was authorized to make and sell these burners in Germany because he had made preparations for manufacturing them before Graff applied for the patent and because the Imperial Patent Law of Germany at that time permitted persons who had already used or prepared to use an invention at the time application for a patent for that invention was made to continue to practice the patented art notwithstanding the granting of the patent. 1 Boesch contended that Hecht's authorization freed the burners manufactured by him from the patent monopoly and that he therefore purchased them free of that monopoly. The Court deemed Hecht's authorization under German law immaterial and concluded that the right granted him thereunder could not authorize "purchasers from him . . . to sell the articles in the United States in defiance of the rights of patentees under a United States patent." Id. at 703.
Plaintiff in this patent infringement suit is the holder of United States Patents Nos. 3,386,705 and 3,791,593 for a composting machine and certain parts of composting machinery, respectively. Defendant, which has counterclaimed for declaratory judgment with regard to the patent suit and for breach of contract, now moves for partial summary judgment on the infringement claims and on its counterclaim for declaratory judgment of non-infringement. Accepting as the factual record the account of events presented by the defendant in its affidavits and exhibits, we find the defense to infringement deficient as a matter of law and will deny the motion.
The plaintiff holds patents for these inventions in Italy as well as in the United States. He had granted before 1975 an exclusive license to Longwood Manufacturing Corporation [**2] to make, use and sell the patented composting machine in the United [*1284] States, and he granted on July 28, 1975, an exclusive license to Celeste Carminati to practice in Italy and in other European Economic Community nations the art patented under the laws of Italy. The defendant's president purchased a composting machine from Carminati, f.o.b. Genoa, in late 1975, and the defendant purchased two more machines from Carminati in 1976, f.o.b. Genoa. The defendant, a mushroom grower and supplier of equipment and materials to mushroom farmers in Pennsylvania, has used the first-purchased of these composters in its own business and has sold the other two. Infringement of the United States patent is alleged on the basis of the use and sale of these three machines.
Defendant concedes for purposes of this motion that the United States patents in suit are valid and enforceable, that the three machines embody the patented inventions and that the plaintiff had granted an exclusive licensing agreement for practicing them in this country. It has advanced two legal grounds for this motion, both of which rely on its purchase of the machines in Italy from Carminati to defeat [**3] the plaintiff's infringement action.
The defendant's first contention is that its purchase of the machines from Carminati, who was authorized under Italian law to sell them, released these articles from the patent monopoly. In support of this argument the defendant relies on the clear and indisputable proposition that "upon familiar principles the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold." United States v. Univis Lens Co., 316 U.S. 241, 249, 86 L. Ed. 1408, 62 S. Ct. 1088 (1942). See also Adams v. Burke, 84 U.S. 453, 21 L. Ed. 700 (1873); Bloomer v. McQuewan, 55 U.S. 539, 14 L. Ed. 532 (1852). In effect, the defendant seeks to extend beyond national borders the rule in Univis Lens Co. concerning escape from the patent monopoly by purchase from an authorized seller.
We find this case to be controlled by the decision in Boesch v. Graff, 133 U.S. 697, 33 L. Ed. 787, 10 S. Ct. 378 (1890). There Graff, who held patents relating to lamp burners both in this country and in Germany, sued the defendant Boesch for infringement of the United States patent [**4] by selling infringing burners in the United States. Boesch defended on the ground that he had bought at least some of the burners in Germany from one Hecht before importing them into the United States. The Supreme Court acknowledged that Hecht was authorized to make and sell these burners in Germany because he had made preparations for manufacturing them before Graff applied for the patent and because the Imperial Patent Law of Germany at that time permitted persons who had already used or prepared to use an invention at the time application for a patent for that invention was made to continue to practice the patented art notwithstanding the granting of the patent. 1 Boesch contended that Hecht's authorization freed the burners manufactured by him from the patent monopoly and that he therefore purchased them free of that monopoly. The Court deemed Hecht's authorization under German law immaterial and concluded that the right granted him thereunder could not authorize "purchasers from him . . . to sell the articles in the United States in defiance of the rights of patentees under a United States patent." Id. at 703.