Leadam v. Ringgold & Co.

• Decision Date: 07 November 1905
• Citation: 140 F. 611
• Parties: LEADAM et al. v. RINGGOLD & CO. et al.
• Court: U.S. District Court — Southern District of New York

140 F. 611

LEADAM et al. v. RINGGOLD & CO. et al.

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

November 7, 1905

Henry D. Williams, for complainants.

William Quinby and Seymour, Seymour & Harmon, for defendants.

HAZEL District Judge.

This is a bill in equity to enjoin the infringement by defendants of patent No. 621,423, issued on March 21, 1899, to Lionel H Leadam, and for an account of the profits and damages. The patent relates to improvements in a boottree, and consists of a wooden device which snugly fits the interior of a boot or shoe, keeping the same stretched or distended and imparting to it a shapely appearance. The suit was originally instituted by the complainants, Lionel H. Leadam, inventor and Agnes Leadam, his wife, to whom the patent had been assigned by the former, and who on the same day orally granted an exclusive license back to her husband, the assignor. After issue herein was joined, Mrs. Leadam in terms reassigned the patent to her husband, and he subsequently, on August 20, 1903, transferred the same to the Lionel H. Leadam Company, a corporation. On August 31, 1903, the latter mortgaged and assigned the patent to one Dammann as trustee and on September 9, 1903, it executed and delivered a quitclaim assignment to the New Jersey Shoe-Tree & Last Company, the present owner, subject, however, to the interest of the said trustee. Each complainant claims a right of recovery from the defendant or an interest in the profits and damages accruing on account of the alleged infringement during their separate ownership. The later acquirements of title were not alleged in the original bill, but, after taking testimony herein, the additional parties in interest were brought in under equity rule 57 by a supplemental bill, which correctly averred the several assignments and ownerships of the patent in suit. The defendants Ringgold & Co. are dealers in the infringing article, and the defendant Oliver A. Miller is the manufacturer thereof.

The point is urged by the defendant that the supplemental bill in its present form cannot be maintained, on the ground that, as the original complainants have parted with their title to the patent, recourse must be had by them to an action at law, and not in equity, to recover the profits and damages for the time that they were owners, respectively. This proposition is thought unsound. The various changes of title in evidence do not convey the choses in action which had accrued at the time of the several assignments of the patent. It is well settled that claims for profits and damages arising from past infringements do not follow the title derived by a naked assignment of the patent. New York Grape Sugar Co. v. Buffalo Grape Sugar Co. (C.C.) 18 F. 638; Curtis Davis & Co. v. Smith (C.C.) 105 F. 949. The different owners of the patent in suit did not transfer their claims for damages and profits for infringement during the period of their several ownerships. In New York Grape Sugar Co. v. Buffalo Grape Sugar Co., supra, which was a suit in equity for infringement of patents, the court said:

'The claim for profits or damages arising from infringements prior to the plaintiff's purchase are choses in action, and the assignee takes the title subject to all the equities existing against the assignors. Such claims do not pass by a mere assignment of the patent. In these bills there are no averments that the plaintiff is the owner of such claims. The title to the patents only, through the various assignments, is alleged, but the allegation of an assignment of the patent is not an allegation of an assignment of claims for past infringement.'

In Curtis Davis & Co. v. Smith, supra, the complainants, during the pendency of an action for infringement of a trade-mark, transferred their business, including trade-mark rights, to another, but did not sell their right to recovery for past infringement. The court said:

'It appears from the allegations of the petition and proposed supplemental bill that Curtis Davis & Co. have not transferred all their interest in the subject-matter of the suit, and that they are still entitled to recover profits prior to the assignment. In these circumstances, a court of equity, having once acquired jurisdiction, will retain it until the questions involved in the suit have been determined. The assignee of an interest in such a suit is entitled to the benefits of the prior proceedings therein.'

Therefore the question is whether this court, having concededly acquired jurisdiction, is deprived of its equity power by the various changes of title during the pendency of the action. Inasmuch as the supplemental bill alleges that an injunction is sought to restrain further infringement of the patent in suit and a recovery of profits and damages by the different complainants for the period only of their interest as owners, the principle of the cases from which I have quoted is undoubtedly applicable; and, as the additional facts are well pleaded, the objection that the court is without jurisdiction is unavailing. The court had jurisdiction of the original bill brought by Leadam and wife, who, as already stated, were respectively licensee and owner of the patent, and therefore the supplemental bill alleging the later transfers is a practical continuance of the original litigation. 1 Beach, Mod.Eq.Pr. § 506, p. 519; 1 Foster's Fed.Pr. § 188, p. 411.

The patent in suit, which has three claims, will now be considered. The first claim only is involved, and reads as follows:

'(1) The herein-described tree for boots and shoes, comprising the toe or forward member, a hell or rear member bifurcated at its forward end and having a pin extending across the bifurcation, and a bar pivotally connected with the toe member and adapted to rest in the bifurcation of the heel member and having a longitudinal slot receiving the pin of the heel member and also having a device adjustable in the direction of its length for engaging the pin of the heel member, substantially as specified.'

The elements of the claim are the forward member and rear member which is bifurcated at its forward end and has a pin extending across such bifurcation, and a slotted bar pivotally connected with the forward member so adjusted as to form a toggle joint leverage. The specification declares that the object and purpose of the arrangement...