Boston Lasting-Mach. Co. v. Woodward, 191.

• Decision Date: 20 July 1897
• Docket Number: 191.
• Citation: 82 F. 97
• Parties: BOSTON LASTING-MACH. CO. v. WOODWARD et al.
• Court: U.S. Court of Appeals — First Circuit

82 F. 97

BOSTON LASTING-MACH. CO. v. WOODWARD et al.

No. 191.

United States Court of Appeals, First Circuit.

July 20, 1897

Frederick P. Fish and William K. Richardson, for appellant.

George O. G. Coale and James E. Maynadier, for appellees.

Before COLT and PUTNAM, Circuit Judges, and WEBB, District Judge.

PUTNAM Circuit Judge.

This patent has previously been before this court, in Woodward v Machine Co., wherein two opinions were passed down, one March 5, 1894, reported in 8 C.C.A. 622, 60 F. 283 and one June 23, 1894, reported in 11 C.C.A. 353, 63 F. 609. The questions then disposed of were those of estoppel and infringement.

We are again pressed with the proposition that the respondents below are estopped from denying the validity of the claims of the patent now in issue. The situation in this respect is however, essentially different from that existing when the patent was previously under consideration. Then the respondents were nominally the same as now, namely, Woodward who was the patentee and the assignor of the patent, and James Barrett and Thomas Barrett; and in both cases all these respondents were and are, in a general sense, co-operating. The essential difference, however, is that in the prior suit, Woodward, who was the only person directly subject to the rule of estoppel, was the principal, and the other respondents, so far as the evidence showed, were acting at his suggestion, and in subordination to him. Now, so far as the evidence shows, the other respondents are the principals, and Woodward is their employe, and no estoppel applies to them, by reason of their engaging Woodward in a subordinate position. Even though all might be properly regarded as joint tort-feasors, if any wrong has been committed, yet they have no joint interest in the sense of the law, and Woodward, being a mere subordinate, cannot be enjoined, under the circumstances of this case, unless his principals are also subject to injunction. Belknap v. Schild, 161 U.S. 10, 25, 16 Sup.Ct. 443. Under the rules laid down in that case, he cannot be holden to account for profits; so there is no ground of equitable jurisdiction against him severed from the persons who employed him. While a person occupying a subordinate position may be in privity with his principal, in the sense in which that word may properly be used in this connection, the reverse is not ordinarily true. Therefore, in the present suit, the question of the validity of the claims in issue is open for determination.

No claims have been presented for our consideration except the second, third, and fourth, as follows:

'(2) In an organized lasting and tacking machine, the combination of a jack for holding a last and presenting it to automatic fastening-driving mechanism, the said automatic fastening-driving mechanism, and an actuating device for starting the fastening-driving mechanism, constructed substantially as set forth, and adapted to be moved in the act of presenting the work in proper position for receiving the fastening, whereby the fastening may be driven at the instant that the work is so located, all substantially as and for the purposes described.

'(3) In an organized machine for lasting and tacking uppers of boots and shoes, the combination of a jack for holding and presenting the last to an automatic fastening-driving device, the automatic fastening-driving device, and the means for setting said fastening-driving device in operation, arranged or located to be automatically moved upon the placing in position of the last, whereby a fastening is driven at the instant the last is so located, all substantially as and for the purposes described.

'(4)' In an organized machine for lasting and tacking the uppers of boots and shoes, the combination of a jack for holding and presenting the last to an automatic, fastening-driving device, the automatic fastening-driving device, and the means for starting and stopping its operation, adapted

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