Chicago Grain Door Co. v. Chicago, B. & Q.R. Co.

• Court: U.S. District Court — Northern District of Illinois
• Citation: Chicago Grain Door Co. v. Chicago, B. & Q.R. Co., 137 F. 101 (N.D. Ill. 1905)
• Decision Date: 27 April 1905
• Docket Number: 26,317.
• Parties: CHICAGO GRAIN DOOR CO. v. CHICAGO, B. & Q.R. CO. et al.

137 F. 101

CHICAGO GRAIN DOOR CO. v. CHICAGO, B. & Q.R. CO. et al.

No. 26,317.

United States Circuit Court, N.D. Illinois, Eastern Division.

April 27, 1905

Raymond & Barnett, for complainant.

George S. Payson, for defendants.

SANBORN District Judge.

Demurrer to supplemental bill. The original bill was filed May 24 1902, alleging infringement of patent No. 527,792, issued to E. A. Hill October 23, 1894, for a car-door bracket, and praying for discovery, accounting, payment of profits, and injunction. Proofs were closed in July, 1904. On November 5 1904, by leave of court and consent of parties, a supplemental bill was filed, alleging infringement by a separate device, begun at some time after the original bill was filed, and that complainant did not know of the use or threatened use of such independent device until about 15 days before filing the supplemental bill. The usual order to demur, plead, or answer being entered, a demurrer was filed setting up that the supplemental bill makes a new case, the suit has not become defective, the bill is unnecessary, the new matter is not material to the relief under the original bill, and that the alleged additional infringement, if any can only be raised by a new original bill.

The Hill bracket, of which infringement is claimed, is a bracket with two vertical and one horizontal faces. The principal claim is that a screw which holds the bracket to the door of a freight car has its head so protected by a housing or raised portion of the bracket as to prevent its being withdrawn by a thief attempting to enter the car by prying out the lower corner of the door without breaking the lock or seal. The door, resting on the horizontal portion of the bracket, prevents the bracket from being so rotated as to draw out the screw. The bracket used by defendant company at the time of filing the original bill is in two parts. It does not make use of the housing to prevent withdrawal or rotation, but protects and conceals the screw or bolt by sliding the outer part of the bracket, secured by flanges, down over the inner part; thus concealing and protecting from removal the screw or bolt which fastens the inner, and incidentally the outer, part of the bracket to the car door. The bracket complained of in the supplemental bill, called the 'McGuire bracket,' is also in two parts, but the bolt or screw is not entirely concealed. It is, however, protected by a hood, and the vertical wall of one of the parts being slid down partly over and close to the screw head; thus tending to prevent both withdrawal and rotation of the screw or bolt.

The supplemental bill charges that the McGuire bracket has been introduced into extensive use, in lots of 500 or more at a time, on defendant's cars, since suit commenced. The question is thus presented whether a new and independent infringement (assuming it to be such only for the purposes of the demurrer), not by a change or modification of an existing infringing or noninfringing device, but by an entirely separate one, can be introduced into the case by supplemental bill, or whether a new suit is not necessary.

It is assumed, merely for the purpose of deciding the demurrer, that the original bill is good on its face, that complainant then had a case, and that the proofs show infringement by defendants' first device. Has the suit become defective, or, if not, is there any other good reason why a supplemental bill is necessary, under equity rule 57? The rule follows:

'Whenever any suit in equity shall become defective from any event happening after the filing of the bill (as, for example, by change of interest in the parties) or, for any other reason, a supplemental bill or a bill in the nature of a supplemental bill may be necessary to be filed in the cause, leave to file same may be granted by any judge of the court on any rule date, upon proper cause shown, and due notice to the other party.'

Fair verbal interpretation of the rule, and judicial construction as well, permit a supplemental bill where the original suit has not become defective. Undoubtedly the usual case is that of some defect, either existing when suit brought, or due to a change of interest or parties, producing complete or partial abatement. Where the defect exists in the original bill, either as to facts charged or relief prayed, this is proper for amendment, yet there is a class of supplemental bills which merely supply such defects, as in the prayer for relief, or bringing in a new party who should have been joined originally. 3 Dan.Ch.Pr. 1532; Story, Eq. Pl. Sec. 343; Chase v. Searles, 45 N.H. 511, 521; Sheffield, etc., Co. v. Newman, 77 F. 787, 23 C.C.A. 459. As to lunacy, insolvency, transfer of interest or liability, newly discovered evidence, etc., see Kennedy v. Bank, 8 How. 586, 12 L.Ed. 1209; Bulter v. Cunningham, 1 Barb. 85; Jenkins v. Eldridge, 3 Story, 299, Fed. Cas. No. 7,267; Gillette v. Bate Refrig. Co. (C.C.) 12 F. 108; Metcalf v. Arnold, 132 Ala. 75, 32 So. 763; Western Tel. Mfg. Co. v. American El. Tel. Co. (U.S. Cir. Ct., Northern District of Illinois, March, 1905) 137 F. 603. Instances of supplemental bills sustained when the suit was not defective, but it was sought to reinforce or sustain the suit, are Jenkins v. International Bank, 127 U.S. 484, 8 Sup.Ct. 1196, 32 L.Ed. 189, where a judgment rendered after original bill was allowed to be brought forward by supplemental bill as an estoppel; Jaques v. Hall, 3 Gray, 194 and Hasbrouck v. Shuster, 4 Barb. 285, where the supplemental bill enlarged or changed the kind of relief; Mellor v. Smither, 114 F. 116, 52 C.C.A. 64, where complainant, having a valid cause of action, filed a defective bill, to which a demurrer was sustained, but who was allowed to file an amended and supplemental bill curing the allegations of the original bill, and setting up matters occurring after it was filed, fortifying his rights; Sheffield, etc., Co. v. Newman, 77 F. 787, 23 C.C.A. 459, where it was held that other and more extensive relief might be secured by supplemental bill; Parkhurst v. Kinsman, Fed. Cas. No. 10,578, where a new party, through whom defendant was covertly acting, was brought in by supplemental bill. In none of these cases had the bill become defective, but the action was in some way supported or re-enforced by the supplemental bill.

The rule that there can be no supplemental bill when the complainant has in fact no cause of action when suit commenced, and neither states a case, nor can do so, is too well settled to require extended citation. Mellor v. Smither, supra; New York, etc., Co. v. Lincoln, etc., Co. (C.C.) 74 F. 67; Bernard v. Toplitz, 160 Mass. 162, 35 N.E. 673, 39 Am.St.Rep. 465; Putney v. Whitmire (C.C.) 66 F. 387; Pinch v. Anthony, 10 Allen, 477; Hughes v. Crane, 135 Ill. 519, 26 N.E. 517. It is equally well settled in patent cases that complainant must have a cause of action when the bill is filed. Judson Mfg. Co. v. Burge-Donaho Co. (C.C.) 47 F. 463; Slessinger v. Buchingham (C.C.) 17 F. 454. In Humane Bit Co. v. Barnet (C.C.) 117 F. 316, this rule was carried so far as to dismiss the bill where the proof showed infringement after the filing of the bill, but before service of subpoena, following Farmers' L.&T. Co. v. Lake St. El. R. Co., 177 U.S. 51, 20 Sup.Ct. 564, 44 L.Ed. 667, deciding that suit is begun when the bill is filed.

The limited purpose of a supplemental bill is to repair or add to a good original case, shown by an original bill, good or bad, either to supply defects sometimes existing when suit brought, but usually afterwards occurring, or to support, fortify, or re-enforce.

There are many decisions, of which Milner v. Milner, 2 Edw.Ch. 114, and Prouty v. L.S.&M.S.R. Co., 85 N.Y. 272, are types to the effect that matters occurring after bill filed, and which can be made the basis of an independent suit and decree, cannot be brought forward by supplemental bill, but must be made the basis of a new suit. In the Milner Case a bill for divorce was filed. Afterwards defendant committed a separate but similar offense, and it was held that this could not be brought into the original suit by supplemental bill. This rule has not, however, been fully adopted in patent cases. By the practice in such cases, if an infringer so changes the use as to still infringe, although the new infringement might be made the subject of an independent suit, the damages or profits arising therefrom may be included and reported by the master, and such changed use is within the injunction. In Higby v. Columbian Rubber Co. (C.C.) 18 F. 601, there was a permanent injunction against continuing the manufacture and sale of a bustle. Defendants had made bustles like the one patented, but different from the one enjoined. They had ceased making those like the patent and like those enjoined, but continued to make a bustle somewhat different from the patent, and not having elastics as described in its claims. Plaintiff claimed that the defendants' bustle was 'substantially' the same as the one enjoined. Judge Lowell says:

'Sometimes it is a great convenience to the parties to bring supposed infringements to the notice of the court by motion; and if a patent has been fully discussed and understood in the trial of the case, and if, in the light of that discussion, it is clear to the court that the change which has been made in a machine or a manufacture is merely colorable, there is no objection to this course. When a case has not been closed, but an account is being taken, an arrangement may sometimes be made to instruct the master to include the profits received from the alleged violation in his account, together with such evidence as may be given of its construction and mode of operation; and, if the

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