Kittle v. Hall

• Decision Date: 03 January 1887
• Citation: 29 F. 508
• Parties: KITTLE v. HALL and others.
• Court: U.S. District Court — Southern District of New York

29 F. 508

KITTLE v. HALL and others.

United States Circuit Court, S.D. New York.

January 3, 1887

James P. Foster, for complainant.

James A. Whitney, for defendants.

COXE J.

This action is for the infringement of letters patent No. 98,505 granted to the complainant January 4, 1870, for an improved spiral spring for mattresses and furniture. The double cone or hourglass spring is constructed by having one or more of its central coils wound at right angles to its axis, instead of spirally, as before. When several of these springs are used, as in a mattress, for instance, the central coils are all on the same horizontal plane, so that when strips of cross-webbing, fastened to a suitable frame, are passed between the coils, the springs are held firmly in a vertical position.

It is asserted by the patentee that prior to his invention the spring in use could not be successfully supported in the middle, or held in a vertical position. It had a tendency to 'bag out.' The specification provides for a slight wooden frame to support the webbing and the springs. The webbing, having its ends secured to this frame, is passed through and fastened to the central horizontal coils, each strip of webbing passing alternately over and under the strip crossing at right angles. The middles of all the springs are thus held in the same relative position, their full elasticity is preserved, and durability is assured.

The claims are as follows:

(1) A spiral spring, for use in mattresses, furniture, etc., so constructed that its central coil or coils are wound at right angles to its axis, substantially as and for the purposes set forth.

'(2) The combination of a spiral spring, when constructed as described, with the cross-webbing, C. C, and frame, D, or their equivalent, when arranged to support such spring substantially as and for the purposes set forth.

'(3) In a spring mattress, having the springs supported from or at their centers, the arrangement of a rattan or a like flexible border, attached to the outer edges at bottom and top of the outside rows of springs, to furnish a suitable support to keep the ticking in line, but which will also yield as any spring or part of the mattress is compressed.' The defenses are-- First, that the complainant has no title to the patent; second, that he is guilty of laches; third abandonment; fourth, lack of novelty; fifth, non-infringement.

To the third claim several distinct and separate defenses are urged, which will be stated hereafter.

There is no flaw in the complainant's title. On the thirty-first of December, 1877, he was forced into bankruptcy. The adjudication vested the title in the court. On the eleventh of April, 1878, the register in charge assigned all the property, as provided by law, to De Witt C. Weeks, the duly-appointed assignee. On the twenty-eighth of January, 1879, Weeks sold and assigned the patent to Francis C. Devlin. Six days thereafter Devlin assigned it to Theodore Wilkins, who held it until the eighth day of October, 1884, when it was transferred by him to the complainant. On the fourth of October, 1878, the complainant was discharged in bankruptcy by the district court. The chain of title is perfect. No valid accusation can be made against it.

The proposition that the bill cannot be maintained because of the laches of the complainant is a most perplexing one. The solution of it has been rendered more difficult from the fact that the complainant's brief, so full and exhaustive upon other branches of the case, makes only casual and passing allusion to the question, which is elaborately presented upon the brief of the defendants. The facts bearing upon this question are as follows:

In the autumn of 1865 the patentee conceived the invention. On the fourth of January, 1870, the patent was granted. In February, 1885, 15 years thereafter, this action was commenced. In 1875 a suit for infringement was commenced against one James V. Schenck, but the proofs were not completed, and it was never brought to a final hearing. No step appears to have been taken in it after July, 1877. No other action was at any time commenced. In the autumn of 1877 the defendants commenced making the infringing mattresses. They were made under a patent granted to James I. Spencer, July 24, 1877, for an improvement in spring bed bottoms. In November, 1877, the defendants issued a circular to the trade, in which they insisted, in most vigorous and uncompromising language, upon their right to manufacture under the Spencer patent, and closed with these words:

'We have only to say in conclusion that Mr. Kittle must do one of two things,-- he must stop interfering with our business, or he must bring suit upon his patent, and thus give us a chance to see how little it amounts to. If he does not do one thing or the other of these, he will soon find himself defendant, instead of plaintiff, in a lawsuit.'

The complainant appears to have chosen the first of these alternatives; for from that time until this suit was commenced there was no more interference with the defendants or their customers, except, he testifies, that he told the defendant Hall, in April, 1882, that a day of reckoning was approaching, and he wished him to keep a strict account of his sales.

From December, 1877, neither the complainant, nor any of the intermediate owners of the patent, has manufactured or asserted any right under it, except as before stated. The assignees, with the exception of Mr. Devlin, who held the patent but a short time, all knew of the infringement, by the defendants not only, but by the trade generally, and yet they made no move to prevent it, though frequently urged to do so. In short, the patent, from the fall of 1877, has been pirated upon by the whole trade. Since then no one has respected it. On the fourth of February, 1876, the defendants, then doing business at Philadelphia, took from the complainant a license to make and vend the patented mattress in that city for one year. The license provided that, in case of the failure of the defendants to perform the conditions of the license, the same was to become null and void, and all rights and privileges under it to cease and determine.

These are the facts. Bearing in mind the theory upon which equity takes cognizance in patent causes, as established by the decision of the supreme court in Root v. Railway Co., 105 U.S. 189, it becomes important to ascertain what the law is as applicable to these facts. The accumulated wisdom of a multitude of precedents has established the principle that he who invokes the protection of a court of equity must be 'prompt, eager, and ready' in the enforcement of his rights. Equity will not encourage a sleepy suitor. As time passes, memory fails, witnesses die, proof is destroyed, and the rights of individuals and of the public intervene. Long acquiescence and laches can only be excused by proof showing excusable ignorance, or positive inability to proceed on the part of the complainant, or that he is the victim of fraud or concealment on the part of others. A mere 'imaginary impediment or technical disability' is not enough. The court will not entertain a case when it appears that the complainant, or those to whose rights he has succeeded, have acquiesced for a long term of years in the infringement of the exclusive right conferred by the patent, or have delayed, without legal excuse, the prosecution of those who have openly violated it. These propositions are, it is thought, abundantly sustained by the following authorities: Piatt v. Vattier, 9 Pet. 405; Wyeth v. Stone, 1 Story, 273; McLaughlin v. People's Ry. Co., 21 F. 574; Spiedell v. Henrici, 15 F. 753; The Fleming, 9 F. 474; Estes v. Worthington, 22 F. 822; Barden v. Duluth, 28 F. 14; Wagner v. Baird, 7 How. 234; City of Concord v. Norton, 16 F. 477; Badger v. Badger, 2 Wall. 87; Wollensak v. Reiher, 115 U.S. 101; S.C. 5 S.Ct. 1137; Brown v. County of Buena Vista, 95 U.S. 157; Lansdale v. Smith, 106 U.S. 391; S.C. 1 S.Ct. 350; Godden v. Kimmell, 99 U.S. 201; Maxwell v. Kennedy, 8 How. 210; Sperry v. Ribbans, 3 Ban. & A. 260; Curt. Pat. Secs. 440, 441; Walk. Pat. Secs. 596, 597; Pom. Eq. Jur. Secs. 418, 419.

In the present case it is argued with considerable plausibility that the complainant, from the date of his patent until the commencement of this action, with the exception of the abortive and abandoned suit against Schenck, has made no active effort to stop infringements, although they commenced before the patent was issued, and continued, with the knowledge of the complainant, until they were well-nigh universal; that the public had a right to assume, from this profound silence and supineness, that the patentee and his successors had relinquished any claim which they might possess. The complainant seems to proceed upon the theory that, if it can be shown that he personally is free from negligence, it is sufficient, and that he shows this when it appears that the title passed out of him when he was adjudicated a bankrupt, and that when he obtained it again in October, 1884, he used due diligence in prosecuting infringers.

The proposition, stated thus broadly, cannot be maintained. A party who purchases a patent which has for years been freely plundered by a multitude of trespassers does not answer the charge of laches by showing that he commenced, immediately after he acquired title, to bring the wrong-doers to account. Such a fact is of no more interest to a defendant sued for infringement than the fact that the last holder of an outlawed note brought an action upon it without delay, is to the maker of the note. But, so far as these defendants are concerned, it cannot be maintained that there was any laches until they stood out from under their license,...