Leader Plow Co. v. Bridgewater Plow Co.

• Decision Date: 06 October 1916
• Docket Number: 1447.
• Citation: 237 F. 376
• Parties: LEADER PLOW CO. v. BRIDGEWATER PLOW CO. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

237 F. 376

LEADER PLOW CO. v. BRIDGEWATER PLOW CO. et al.

No. 1447.

United States Court of Appeals, Fourth Circuit.

October 6, 1916

Parker Cook, of Washington, D.C. (Armistead Gordon, of Staunton Va., on the brief), for appellant.

Melville Church, of Washington, D.C. (D. O. Dechert, of Harrisonburg Va., on the brief), for appellees.

Before PRITCHARD, KNAPP, and WOODS, Circuit Judges.

WOODS Circuit Judge.

The Leader Plow Company, as assignee of patents No. 764,051 issued to G. M. Hanger July 5, 1905, and No. 792,703, issued to G. M. Hanger and Daniel S. Thomas June 20, 1905, for improvements in garden hand plows, brought this action for infringement against the Bridgewater Plow Company and Daniel S. Thomas. The plaintiff rests its case on claim No. 1 of the first patent and claim No. 3 of the second patent, which read as follows:

1. 'In a hand plow, the combination, with a down-turned standard having spaced side arms, of a wheel journaled to and between the side arms, spaced handle members pivoted at their lower ends to the side arms of the standard, a brace connecting the handle bars, pivots connecting the upper ends of the bars to the handle bars, said pivots also constituting means for fastening the cross-brace to said handle members and means for adjustably fastening the lower ends of the supporting bars to the standard to permit the adjustment of the handle members toward and from the same.' 3. 'In a plow, the combination, with a beam member, of a handle member, one of said members comprising spaced elements, a connection between the members adjustably passing between said elements, and means located at one side of the connection, and separate therefrom, for clamping the elements upon said connection.'

The defendant the Bridgewater Plow Company manufactures and sells plows under patents No. 853,961, issued to Joseph S. Click May 21, 1907, and No. 878,774, issued to Charles R. Coffman February 11, 1908, for improvements in hand plows.

One of the defendants, Daniel S. Thomas, was formerly the owner of the two patents now owned by the plaintiff, and was engaged in the manufacture and sale of garden plows thereunder. On January 6, 1906, Thomas sold his plant, his stock, and the two patents to Walter A. Payne and McChesney Goodall for $7,500, and Payne and Goodall sold to the plaintiff, Leader Plow Company. Afterwards Thomas acquired the later Coffman patent and a half interest in the later Click patent. The defendant Bridgewater Plow Company is doing business under a license from Thomas as assignee of these patents, which embraces an option to purchase them for $2,500. Thomas is manager of the defendant corporation.

The garden plow is a comparatively simple implement, long in use, and apparently admitting of little important improvement of construction. The patents set up by the plaintiff being nothing more than improvements on the prior art, the general rule on the subject would require that they be given a narrow construction. Singer Mfg. Co. v. Cramer, 192 U.S. 265, 24 Sup.Ct. 291, 48 L.Ed. 437. But this general rule is elastic enough to allow the application of the dominant equitable rule that as between the assignor and assignee the construction of the patent must be broad and liberal enough to give full value to the patent assigned, and shut out the assignor from every structure within the fair meaning of the claim. When Thomas assigned the Hanger and Thomas and Hanger patents, he asserted them to be valid, and he is estopped to deny their validity. He was not estopped, however, from showing the limits of the assigned patents by evidence of the prior art, or any other relevant fact. Martin, etc., Co. v. Martin, 67 F. 786, 14 C.C.A. 642; Automatic S. Co. v. Monitor S. Co. (C.C.) 180 F. 983; Noonan v. Chester Park Co., 99 F. 90, 39 C.C.A. 426; Smith v. Ridgely, 103 F. 875, 43 C.C.A. 365; Rollman v. Universal H. Works (D.C.) 207 F. 97; Plunger E. Co. v. Stokes, 212 F. 941, 129 C.C.A. 461. But on an issue of infringement between assignor and assignee the courts will give a liberal rather than a narrow construction to the patent assigned, if necessary to preserve its value.

'While a patentee assignor may, when made a defendant, litigate the scope of his patent and have it judicially construed according to its true extent (Noonan v. Chester, 99 F. 91, 39 C.C.A. 426; Smith v. Ridgely, 103 F. 875, 43 C.C.A. 365), the courts surely will not, unnecessarily, construe it so narrowly as to make it worthless. See Alvin Co. v. Scharling (C.C.) 100 F. 87, by Judge Gray. They will be inclined, so far as the record permits, to make its exclusive right a real and valuable thing. Ordinarily equitable considerations must require this point of view, and the resulting liberality of construction. ' United States Frumentum Co. v. Lauhoff, 216 F. 610, 132 C.

C.A. 614. Schiebel v. Clark, 217 F. 760, 133 C.C.A. 490; Alvin Mfg. Co. v. Scharling (C.C.) 100 F. 87.

The estoppel extends to every structure within the fair meaning of the claim. United P.M. Co. v. Cross P.F. Co., 227 F. 600, 142 C.C.A. 232.

Does this estoppel extend to the Bridgewater Plow Company? If, as an independent corporation, it were confined in its defense to the rights acquired under the license from Thomas, it would be subject to the same estoppel; 'for the assignee of a patent takes it subject to the legal consequences of the previous acts of the patentee. ' McClurg v. Kingsland, 1 How. 202, 11 L.Ed. 102; Worley v. Tobacco Co., 104 U.S. 340, 26 L.Ed. 821. But if the Bridgewater Plow Company was making and selling plows as a corporation independent of Thomas and not in association with him, it would be entitled to the entire prior art without respect to the license under the junior patents. The invalidity of the junior patents would not affect its right in common with the public to the prior art.

We do not think, however, that the defendant company can be said to be disassociated from Thomas. The facts that it entered upon its business under a license from Thomas and that he is its manager tend strongly to support the conclusion that the corporation is doing business in such association and privity with Thomas that it is subject to the same estoppel in favor of the plaintiff. Thus the corporation acting under authority from Thomas and under his general direction as manager may justly be said to...