Bradford Belting Co. v. Kisinger-Ison Co.

• Decision Date: 04 February 1902
• Docket Number: 1,002.
• Citation: 113 F. 811
• Parties: BRADFORD BELTING CO. v. KISINGER-ISON CO.
• Court: U.S. Court of Appeals — Sixth Circuit

113 F. 811

BRADFORD BELTING CO. v. KISINGER-ISON CO.

No. 1,002.

United States Court of Appeals, Sixth Circuit.

February 4, 1902

W. W Wood, for appellant.

George J. Murray and Walter F. Murray, for appellee.

The Kisinger-Ison Company, the appellee in this appeal, on February 8, 1897, being the owner of letters patent No 428,123, issued to David B. Morrison May 20, 1890, and of letters patent No. 491,811, issued to W. S. Kisinger March 7 1893,-- both said patents being for improvements in wire couplings,-- exhibited its bill in the court below against the Bradford Belting Company, the appellant herein, complaining of the infringement by the latter company of the rights secured under the patents aforesaid. The answer of the defendant to the bill averred that the alleged infringement consisted of the sale of wire couplings made under and in accordance with letters patent No. 575,641, issued to Gerard and Lawrence January 19, 1897, and denied that their sales of couplings infringed either the Morrison or the Kisinger patents. Upon the hearing of that case the circuit court decreed in favor of the defendant, dismissing the bill. Upon appeal this court reversed the decree so far as it concerned the Morrison patent, which it held valid and infringed. An injunction was ordered, and a reference to a master to take and report an account of profits and damages, was directed. In pursuance of the mandate of this court, the circuit court issued a perpetual injunction against the defendant in that suit, and also ordered a reference to the master to take the account. The master proceeded upon the reference. Thereupon the defendant in that suit filed in the same court this bill, wherein, after setting forth the proceedings in the former suit as above recited, it alleged that, prior to the making of the sales of couplings which had been adjudged in said former suit to be an infringement of the Morrison patent, it had acquired, by grant from Gerard and Lawrence, the exclusive right of sale of wire couplings made under their said patent for the full term thereof; the said Gerard and Lawrence at the time of making such grant further stipulating to deliver to it (the Bradford Belting Company), at an agreed price, such couplings as it would from time to time order, or that upon their failure to do so the said Bradford Belting Company might manufacture them for itself, and, further, that they would protect it in the sale and use of said couplings, and save it harmless from all loss and damages from any suit that might be brought for infringement on account of the sale or sue thereof. It was therein further alleged that about April 1, 1897, Gerard and Lawrence assigned all their right, title, and interest said patent, including their said contract with it (said Bradford Beltin Company), to one Edward Case; that on the 8th of April, 1897, Case assigned one-half his interest therein to Gerard, and that Gerard and Case continued to furnish couplings to said company until about the date of the determination of this court in said former suit; and, further, that after the final decree therein, and the perpetual injunction therein ordered had been issued, Gerard and Case assigned all their right, title, and interest in said Gerard and Lawrence patent to the Kisinger-Ison Company for the expressed consideration of $150. It is charged that the Kisinger-Ison Company, at the time it took said assignment, had full knowledge of the rights of the complainant under its said grant and contract from and with Gerard and Lawrence, but that the said Kisinger-Ison Company refuses to perform the said contract. And it is complained that said Bradford Belting Company, as well as the public, are precluded from the benefits of said Gerard and Lawrence patent. The relief prayed by the bill is that the defendant, the Kisinger-Ison Company, be decreed to account for any pay over to the complainant the expenses of said former suit, as provided in the contract of the latter with Gerard and Lawrence; that the complainant be absolved from all loss, cost, or damage arising out of said former suit; that specific performance by the defendant of the contract of Gerard and Lawrence with the complainant be decreed; and that such further relief be granted as the nature of the case requires. To this bill the defendant interposed a general demurrer. The case coming on to be heard on these pleadings, it was held and decreed 'that the said demurrer be sustained, and the bill of complaint dismissed, at complainant's cost. ' Complainant appeals.

Before LURTON and SEVERENS, Circuit Judges, and WANTY, District Judge.

SEVERENS Circuit Judge, having made the foregoing statement of the case, .

1. It is assigned as error that the court held that it had no jurisdiction over the matter complained of in the bill; but the demurrer raised no such question, nor is there anything in the record to show that the court held that it had no jurisdiction. On the contrary, the decree shows that it was passed upon the merits. If it had been dismissed for lack of jurisdiction, it should have been so stated therein. Ashley v. Board, 60 F. 55, 68, 8 C.C.A. 455; Terry v. Davy, 46 C.C.A. 141, 107 F. 50-52; Cattle Co. v. Frank, 148 U.S. 603-612, 13 Sup.Ct. 691, 37 L.Ed. 577. We must therefore presume from the decree that the bill was not dismissed on that ground. But it seems proper to say that we see no reason to doubt that, notwithstanding there is no independent ground of jurisdiction, the matter of the bill is so related to that of the original suit that it may be regarded as a dependency thereof, and may be supported upon the jurisdiction acquired in the former suit. Krippendorf v. Hyde, 110 U.S. 276, 4 Sup.Ct. 27, 28 L.Ed. 145; Johnson v. Christian, 125 U.S. 642, 8 Sup.Ct. 1135, 31 L.Ed. 820.

2. Upon the merits the contention of the appellant is that the appellee, by taking an assignment of the legal title to the Gerard and Lawrence patent with notice of the exclusive license to the appellant to sell articles covered by that patent, and of its contract with the patentees is now estopped from denying to the appellant the right to the full enjoyment of the privileges professed to...