Lane v. Welds

• Decision Date: 04 December 1899
• Docket Number: 739.
• Citation: 99 F. 286
• Parties: LANE et al. v. WELDS et al.
• Court: U.S. Court of Appeals — Sixth Circuit

99 F. 286

LANE et al. v. WELDS et al.

No. 739.

United States Court of Appeals, Sixth Circuit.

December 4, 1899

This is a bill brought to restrain infringement of letters patent No 316,458, issued March 31, 1885, to one W. Hewitt, which has been assigned to the complainants, and letters patent No 518,506, issued April 17, 1894, to J. and C. Lane, the complainants below and appellants here. Both patents are for improvements in wire fences. The bill avers that the validity of the patents and the fact of infringement is res adjudicata by reason of a decree in a former suit upon the same patents between complainants and one William Price, the defense having been made for Price by the present defendants in their own interest. The answer denies infringement; denies that defendants were parties or privies to the former suit, or in any way estopped thereby; and denies the validity of the patents involved. The decree was for the appellees, the lower court finding that defendants were not estopped by the decree in the former suit with Price, and that the patents involved were void.

R. A Parker, for appellants.

James Whittemore, for appellees.

Before TAFT, LURTON, and DAY, Circuit Judges.

LURTON Circuit Judge, after making the foregoing statement of facts, .

1. The decree against Price, establishing the validity of the two patents upon which this suit is brought, does not estop the present defendants from challenging the validity of those patents. Defendants were not parties or privies to that suit, and had no direct interest therein. B. A. Weld, one of the defendants, was the patentee of a fence-making machine, which was capable of making many different kinds of wire and wire and slat fences. The patentee, or the firm of which he was a member, it does not clearly appear which, sold to one Price one of the Weld fence machines. They also sold him some crimped or corrugated wire pickets, which were capable of being used in the construction of many kinds of wire fences, including those covered by the Hewitt and Lane patents. Price was sued for making the Hewitt and Lane fence with the Weld machine. Neither the Weld fence machine nor the crimped pickets infringed either patent, as neither patent included any mechanism for the construction of the fence or the crimped or corrugated picket, except so far as such pickets were one element in the fences covered by the claims of those patents. In fact, crimped or corrugated wire pickets were old, and could not have been the subject of any patent as an article of manufacture. Weld, therefore, had no interest in the suit of Lane and Lane against Price, except in so far as it limited the use of the Weld machine to fences not covered by the two patents owned by Lane and Lane, or to those having licenses under those patents. The claim that B. A. Weld, either for himself or the firm of which he was a member, assumed to defend that suit, and thereby estopped himself, is not satisfactorily made out. The most that can be said is that he at one time promised to defend same, and did pay five dollars to the solicitor employed by Price to obtain copies of the patents claimed by Lane and Lane. He, however, declined to carry out this promise, and refused to pay the retainer fee of counsel or the expense incident to making the necessary patent office investigations. When Price found that Weld would not defend the suit, he abandoned the case, and suffered a decree to be taken upon an agreement by which the complainants in that suit waived an assessment of damages and paid the costs.

Aside from the unsatisfactory character of the evidence relied upon as establishing the fact that the defendants, or any one of them, did defend said suit, even so far as any defense was made, there is no evidence whatever going to show that the complainants in that suit knew anything whatever as to the interference of the present defendants with the defense of that suit. Indeed, it does not appear that the complainants in the Price suit even knew of the relation of price to either B. A. Weld, or Weld & Co., or of the license which Price held under them to use and sell their machine. An estoppel must be mutual. If the defendants did not openly and avowedly, to the knowledge of the complainants, undertake the defense of that suit, the complainants would not have been estopped by the decree, if adverse to them, in a subsequent suit against the defendants. The principle is correctly stated thus in Herm. Estop. p. 157:

'If one not a party of record, nor in privity with a party of record, to a judgment, desires to avail himself of the judgment as an estoppel, on the ground that he in fact defended the action resulting in the judgment, he must not only have defended that action, but must have done so openly, to the knowledge of the opposite party, and for the defense of his own interests. That he employed an attorney who appeared for the defendant of record, and appeared as a witness for the defendant, is not sufficient.'

In andrews v. Pipe Works, 19 C.C.A. 548, 76 F. 166-173, 36 L.R.A. 139, a case decided by the court of appeals for the Seventh circuit, in reference to an estoppel originating in the defense of a suit to which the party against whom the estoppel was pleaded was not a party of record, the court, speaking by Woods, C. J. Said:

'Estoppels in such cases, as in others, must be mutual, and it is not to be considered that Andrews and Whitcomb became bound by the decree, by reason of their participation in the defense, unless their conduct in that regard was open and avowed, or otherwise known to the opposite party, so that it, too, was concluded, or would have been by an adverse judgment. Herm. Estop. p. 157; 2 Van Fleet, former Adj. § 523; 2 Black, Judgm. § 540; Freem. Judgm. Sec. 189; Lacroix v. Lyons (C.C.) 33 F. 437; Schroeder v. Lahrman, 26 Minn. 87, 1 N.W. 801; Association v. Rogers, 42 Minn. 123, 43 N.W. 792; Brady v. Brady, 71 Ga. 71; Majors v. Cowell, 51 Cal. 478; Allin's Heirs v. Hall's Heirs, 1 A.K.March. 525.'

In Cramer v. Manufacturing Co., 35 C.C.A. 508, 93 F. 636, 637, where a like plea had been sustained by the court below, that court, speaking by Gilbert, C. J., said:

'In so holding, the circuit court applied the well-settled rule that one who, for his own interests, assumes the defense of an action, is bound by the judgment as if he had been a party thereto or in privity with the defendant. But it must not be overlooked that the rule is subject to the limitation that, in order that one not a party who has assumed the burden of the defense of an action shall be bound by the judgment therein rendered, his connection with the defense must be open and known to the opposite party.'

2. The circuit court did not err in holding void both the Hewitt patent, No. 316,458, and the Lane and Lane patent, No. 518,506. The only claim of the Hewitt patent was for a new article of manufacture, 'a metallic fabric composed of a series of corrugated, kinked, or crimped strips, rods, or pieces of metal, and of a series of wire cables, the strands of which, respectively, embrace and bind in each strip independently of every other strip, substantially as shown and described. ' The fence of the Hewitt patent in suit is shown by Fig. 2 of the patent, and the crimped picket by Fig. 4, both of which are shown below:

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The specifications recite that 'the office of the corrugation,...