D'Arcy v. Staples & Hanford Co.

• Decision Date: 19 May 1908
• Docket Number: 1,739.
• Citation: 161 F. 733
• Parties: D'ARCY v. STAPLES & HANFORD CO.
• Court: U.S. Court of Appeals — Sixth Circuit

161 F. 733

D'ARCY v. STAPLES & HANFORD CO.

No. 1,739.

United States Court of Appeals, Sixth Circuit.

May 19, 1908

F. L Chappell, for appellant.

F. P Warfield, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

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

It is alleged in the bill of complaint that prior to the commencement of this suit the complainant had filed a bill in equity in the Circuit Court of the United States for the District of Massachusetts against one Charles H. Lord, a citizen of that state, charging him with infringement of their said patent by the use and sale of spring supports manufactured and sold to him by D'Arcy, the defendant in the present suit, and that the constructions now complained of 'are identical in all essential features with those in controversy in the said suit above mentioned against Charles H. Lord. ' It is further alleged that the suit was proceeded with and was brought to hearing upon pleadings and proofs; that thereupon the court rendered its opinion sustaining the validity of the first and third claims of the patent, and finding the infringement thereof by the defendant, Lord; and that the court entered a decree in accordance with its said opinion. The bill then proceeds as follows:

'Your orator further avers that thereafter the said defendant, Charles H. Lord, who was defended in all respects by the defendant herein, Frank P. D'Arcy, who had assumed entire control of the said suit, filed a petition for a rehearing, which said petition, after due consideration thereof by the court, was denied.'

The answer of the defendant admits the commencement of the suit in Massachusetts and the prosecution thereof to a final decree as alleged in the bill, and further, admits that one of the structures here in controversy is essentially the same as the one held to be an infringement in the former case, but avers 'that the other structures here in controversy are essentially different from the structure there held to be an infringement. ' The answer makes no response to the allegations of the bill touching the participation of D'Arcy in the defense of the Lord suit.

It is urged by the complainant, now appellee, that D'Arcy, by having taken up the defense of his vendee, Lord, and conducted it as if it were his own, is estopped by the decree. This is the mainstay of the appellee's position in argument on this appeal. If this position depended upon the allegations of the bill, it would be difficult to support it. The bill does not allege, at least with any sufficient certainty, that D'Arcy was given control of the defense at the beginning, when he could have employed his counsel, shaped the answer, and conducted the examination of the witnesses and the production of other proof, so as to fully exhibit the defendant's case, and, incidentally, his own.

But in the course of taking the testimony in this case before the examiner the defendant's counsel made the following admission, which was taken down:

'Defendant admits by his counsel that Frank P. D'Arcy, defendant herein, took charge of the defense in the suit of Staples & Hanford Company v. Charles H. Lord, in the Circuit Court of the United States for the District of Massachusetts, and defrayed the expense thereof, but that said Frank P. D'Arcy made no move to become a party to the said suit, was never asked to become a party by the complainant or any one else, and did nothing more than to protect the interests of said defendant, Charles H. Lord, and hold him harmless as to any decree that might be or was entered against him.'

And Lord himself testified:

'That after the bill was filed in that suit he (Lord) had nothing whatever to do with the conduct thereof, but the entire case was turned over to the D'Arcy Spring Company, which is the business name of the defendant D'Arch, and that said D'Arcy had entire charge of the defense.'

Lord's testimony further shows that:

'He did this in view of correspondence between D'Arcy and Lord and D'Arcy and Nelson, Lord's attorney, to the effect that D'Arcy would take charge of the suit against Lord, providing he should have 'complete control of the litigation."

The foregoing admission of counsel and the testimony of Lord were put into the case without any objection founded upon the pleadings. The allegations of the bill were defective in this regard. Nevertheless, it is not the case of an entire want of pleading, and there is some show of an attempt to plead that D'Arcy undertook and carried on the defense for Lord. In these circumstances we think it cannot be doubted that he is concluded by the decree in respect to all questions of law or fact which were necessarily litigated and determined in that suit. They are matters finally adjudged as between the parties to the present suit. Lane v. Welds, 99 F. 286, 39 C.C.A. 528; Penfield v. Potts & Co., 126 F. 475, 480, 61 C.C.A. 371.

We are next to inquire what questions were definitely settled in the former adjudication, and upon which the estoppel rests. The principles by which we are to be guided are clearly stated and defined by numerous decisions of the Supreme Court, from which we might select for a beginning the cases of Cromwell v. Sac County, 94 U.S. 351, 24 L.Ed. 195, and Russel v. Place, 94 U.S. 606, 24 L.Ed. 214. Before referring to these and other cases we should premise that the infringement here complained of is another infringement than that which constituted the cause of action in the Lord Case, and the estoppel is not the same as that which arises where the identical cause of action is sought to be relitigated. The questions to which the estoppel relates are questions which were incident to and involved in the former suit. This distinction is clearly marked in the opinion of the court in Cromwell v. Sac County, supra. It is desirable, also, to state certain facts concerning the former suit, in order to ascertain the application of the rules of law which govern the subject.

The patent was for a support for springs in upholstery, such as chairs, sofas, bed bottoms, and the like. The spring support proposed by the patent, as shown in the drawings, comprised two forms, each consisting of a single wire, of sufficient strength to uphold the springs, and extending from the top of the frame of the chair, etc., on one side, down and under the bottom of the springs, and then up to the top of the frame on the opposite side. Along the nearly horizontal portion of this wire, in the first form shown, horizontal coils were formed of the wire at proper distances apart to receive the straight stem of a wire spring in the form of an inverted cone. This was the adaptation for supporting the spring. Fig. 2 of the patent illustrates this form of support and springs assembled thereon.

(Image Omitted)

2, 2, and 3, 3, is the spring support which is the subject of the patent. b', c', and d' are the stems of the springs going down through the coil of the supporting wire. c' shows underneath a like coil in a cross supporting wire, in cases where a cross-wire is used. The dotted lines below at the right and left hand represent a conformation of the spring support to adapt it to different widths of bed bottoms. In another form of spring support the horizontal part is shown in vertical 'corrugations,' as they are called; that is, in short, abrupt bends, in which a hook formed of the stem of the spring turned upward, then outward, and then downward, rests. This latter corrugated form of the support is the subject of the second claim of the patent and is not here involved, except as it may aid in interpreting the first and third claims. It may be noted here that this scheme of a spring support contemplates a single wire centrally supporting the spring at its apex, and not two parallel supports for the same spring, though in the second form, where an hour glass form of spring may be used, the outer coils of the spring may be rested in the corrugations of the spring support. In the Lord Case the structure which was held to offend consisted of a wire spring support, otherwise like that of the patent, but at the connection with the spring the wire was bent upward in the form of a loop, and this loop was bent in the form of a hook over the outer coil of an hour glass spring. When the springs and their supports were assembled, these hooks, going over the wires, would hold the springs in their places. But the hooks were not closed over the coils of the springs, and it was therefore easily possible to engage and disengage the entire structure by mere manipulation. So the parts might be shipped to the retailer in packages put up more compactly, in the 'knock-down' as it is called, and be by him assembled in the proper relations for the ultimate purchaser, thus saving considerable expense in the cost of transportation.

After the decree was entered the complainant sought to reopen it and allow it (the complainant) to prove another infringement by the use and sale by defendant of another spring support which did not contain a bend in the wire, but was connected with the springs by independent wire fastenings. The court refused to reopen the case, holding at once that this was not an infringement. In the present case one of the alleged infringing spring supports is identical with that held to infringe in the Lord Case. The pleadings and decree in the Lord Case were general, declaring simply that the defendant had infringed. There is nothing, therefore, in them which indicates with precision what kind of a spring support was held to infringe. But the Circuit Court filed an opinion, and this opinion was adopted as its own by the Circuit Court of Appeals on appeal to that court. 148...