Dashiell v. Grosvenor

• Decision Date: 05 February 1895
• Docket Number: 110.
• Parties: DASHIELL v. GROSVENOR et al.
• Court: U.S. Court of Appeals — Fourth Circuit

66 F. 334

DASHIELL v. GROSVENOR et al.

No. 110.

United States Court of Appeals, Fourth Circuit.

February 5, 1895

The court stated the case as follows:

This is an appeal from a decree rendered in the circuit court of the United States for the district of Maryland in the chancery cause of James B. M. Grosvenor and others against Robert B Dashiell, by which it was adjudged that letters patent No 425,584, granted to Samuel Seabury, dated April 15, 1890, for improvement in breech-loading cannon, are valid, and that the same have been infringed by Robert B. Dashiell; also, that said Seabury and his assigns recover from said defendant certain profits and damages, and that a perpetual injunction be issued. 63 F. 584.

It is claimed in the bill, which was filed on the 25th July, 1892 that Seabury was the inventor and patentee, and that he assigned certain interests in the letters patent to his co-complainants, who with him then owned the entire right and title to the invention; that the defendant, well knowing the premises, has wrongfully, unlawfully, and injuriously, with intent to derive profits therefrom, and to deprive complainants of the royalties to which they were entitled conspired, combined, and confederated with William M. Folger and other persons, and infringed upon the rights of the owners of said patent, by making and using, and causing and authorizing others to make and use, a large number of breech-loading cannon, embodying the inventions described and claimed in and secured by said letters patent, without any authority from said owners so to do, whereby defendant has realized large profits, to the loss and injury of the patentee and his assignees; that at the time of the infringement charged the defendant was an officer of the United States navy, holding the rank of ensign, and was connected with the bureau of ordnance of the navy department, of which Commodore William M. Folger was then and still is in charge, having control and supervision of the manufacture thereat, under the direction of said bureau, of cannon for the use of the navy of the United States, particularly at the United States navy yard at Washington, in the District of Columbia; that, shortly after said letters patent were issued to Seabury, he exhibited a model of the invention, together with drawings relating to the same, to said Commodore Folger, at his office in the navy department at Washington, his purpose being to procure a trial of the device mentioned, and, in case it proved successful, its adoption by the navy department, and that the said Folger requested him to furnish his said bureau with working drawings by which the department would be able to construct a breech-loading cannon embodying such invention, which Seabury proceeded to do, and delivered the same to Folger; that afterwards the defendant, making use of the information and drawings so provided, which it is charged were given him by Folger for that express purpose, undertook to construct and devise a design substantially the same as that so invented by Seabury, changing the form of certain parts so as to evade the charge of infringement; that defendant, in pursuance of this purpose, did contrive a design, and make drawings of the same, which he furnished to Folger, who thereupon, with the consent, co-operation, and aid of defendant, proceeded to construct and make trial of a breech-loading cannon in conformity with the design of defendant, embodying substantially the Seabury invention, with immaterial changes in the detail thereof, purposely designed to evade the charge of infringement, and intended to defraud Seabury and his assigns of their rights under the said letters patent; that, a test of the same proving successful by reason of the great merit of the Seabury invention embodied therein, a large number of breech-loading cannon were constructed at said Washington navy yard, according to such design, under the procurement of defendant, and with his consent, as the pretended inventor of the design, as well as in pursuance of the conspiracy, combination, and confederacy of said Folger with the defendant; that a large number of such cannon are now in process of construction at said navy yard, under such consent and authority, and in pursuance of such conspiracy and confederacy; that such infringement was conducted by defendant and Folger in a secret manner, and was intentionally kept from the knowledge of complainants until it reached such dimensions that concealment was no longer possible; that such acts worked a great fraud on Seabury and his assigns, as they were intended to do; and that defendant will continue to make and use, and cause others to make and use, breech-loading cannon under the invention secured by said letters patent, and thereby cause irreparable injury to plaintiffs, unless restrained by writ of injunction.

The prayer of the bill is that defendant may be compelled to account for and pay to plaintiffs the income and profits so unlawfully obtained, together with damages and costs, and that he be perpetually enjoined and restrained, as also his clerks, servants, employes, agents, attorneys, and all persons acting under his authority, from making and using, or causing to be made and used, breech-loading cannon embodying the Seabury invention, and for such further relief as may in the premises be just and proper.

The defendant answered, denying all the charges of fraud, and particularly the allegations as to the conspiracy and confederation with the chief of the bureau of ordnance of the navy department. He also denied the Seabury was the true, original, and first inventor of the improvement set forth in his letters patent. The answer admits that the defendant is a naval officer, connected with the bureau of ordnance, and that Commodore Folger is the chief of said bureau; that the defendant has been under the orders of such chief while he was engaged in the manufacture of the cannon alluded to in the bill; that in December, 1889, the defendant told Folger that he was designing a rapid-fire gun and that he completed his plans and drawings for a model of the same in April, 1890; that in September, 1890, he was placed in charge of the 'proving grounds,' at Indian Head, in Maryland, where he has since been, but that he has had nothing to do with the manufacture or sale of the cannon alluded to, except to test them as to structural weakness, facility of operation, rapidity and precision of fire, and their weakness, facility of operation, rapidity and precision of fire, and their efficiency and safety; that in August, 1890, he exhibited a model of his invention to Commodore Folger, who asked him to prepare working drawings for a four-inch rapid-fire gun, which he did, sending them to the bureau in September, 1890; that breech-loading cannon have been constructed at the navy yard at Washington, embodying an invention patented to him on the 9th day of February, 1892, but that they were manufactured under the orders, supervision, and authority of Commodore Folger and the officers of said navy yard. Other matters are set forth in the answer, but will not be referred to, as, from our view of the case, they are immaterial.

A great number of witnesses were examined relative to the patents in controversy, to the state of the art to which they belong, and to the manufacturing of breech-loading cannon at the Washington navy yard, the contract relating to the use of defendant's invention, and the royalty to be paid him by the navy department for the right to use the same.

The case came on to be heard, and on the 19th day of July, 1894 a decree was entered in the court below (62 F. 584) adjudging the Seabury patent to be valid in law; that the defendant had infringed upon the same; that complainants recover of him the profits made by him on account of such infringement; that an account be stated, showing the number of breech-loading cannon made and caused by defendant to be made, embodying the invention described in the Seabury patent, and the gains and profits defendant had received from his infringement of the same, together with the damages complainants have sustained thereby; and that a perpetual injunction be issued against the defendant, restraining him, his agents, clerks, servants, and all persons claiming or holding under him, from making, using, or selling, or in any manner disposing of, or authorizing others to make, use, and sell, breech-loading...