Robinson v. American Car & Foundry Co.

• Decision Date: 03 January 1905
• Citation: 135 F. 693
• Parties: ROBINSON v. AMERICAN CAR & FOUNDRY CO. [1]
• Court: U.S. Court of Appeals — Seventh Circuit

135 F. 693

ROBINSON v. AMERICAN CAR & FOUNDRY CO. ^[1]

United States Court of Appeals, Seventh Circuit.

January 3, 1905

The bill was filed to enjoin the alleged infringement of a patent issued to the appellant for new and useful improvements in casting 'composite and other wheels,' dated November 23, 1897, and numbered 594,286. The bill asserts, 'Which title was corrected November 30, 1897, by an amendation indorsed upon said letters, signed by the Assistant Secretary of the Interior, and countersigned by the Acting Commissioner of Patents,' not stating, however the title of the patent, nor in what respect that title was corrected. Otherwise the bill contains the usual allegations in such bills.

The answer denies that the complainant was the original and first inventor of the alleged improvement in casting 'composite or other car wheels described in letters patent No. 594,186 dated November 23, 1897, as set forth in said bill of complaint'; denies the novelty of the invention; denies knowledge of the ownership of the patent by the complainant denies the utility and value of the patent; denies public acquiescence in the validity of the patent and the rights of the complainant thereunder; denies 'that it has at any time heretofore made, used, or sold the alleged invention and improvements set forth in said letters patent, or caused others so to do'; and denies intent to make, use or sell the alleged invention; denies that the alleged invention or improvements described in the letters patent contain the quality of invention, or require invention, or that the same are patentable, or that they exhibit anything more than the usual skill of mechanics employed in similar arts and industries. The answer then asserts that the alleged processes, combinations, molds, inventions, and improvements illustrated and described in the letters patent were, long prior to the supposed invention or discovery thereof by the complainant, described in 19 patents of the United States, which are set forth in the answer, and in a certain British patent also set forth. The answer further asserts prior public use of the supposed invention by many parties whose names and residences are stated, and in that connection asserts: 'This defendant, further answering, says that since the summer of 1891 it has used the processes, combinations, and devices, and made the products in its works at Chicago, Illinois, of which infringement is charged against it by the complainant under his said letters patent sued on in this cause, and that the specific acts of infringement charged in this cause consisted in the same acts and doing the same things, and in none other, which it has practiced and done since the summer of 1891 at its works in Chicago, Illinois.' The answer then further alleges that on July 12, 1898, the complainant filed his bill in the court below against the Wells & French Company and the Chicago City Railway Company, charging infringement of his said letters patent No. 594,286; that the defendants therein answered to that suit, denying infringement, in which cause evidence was taken, and upon the hearing the court below found the issue of noninfringement with the defendant, the Wells & French Company, and a decree was entered dismissing the bill of complaint; that the complainant appealed therefrom to the United States Circuit Court of Appeals for the Seventh Circuit, and that such decree was by said court, on the 29th of January, 1902, in all respects affirmed. The defendant further stated that it had succeeded to the rights of the Wells & French Company and to its plant, and is conducting and operating the same, with the same processes, molds, and methods of manufacturing car wheels that had been employed by the Wells & French Company, and which were found by the decree stated to be no infringement of letters patent No. 594,286, and that it is entitled to the benefit and effect of the decree of the court rendered in that suit, which decree is charged to have settled the question of infringement, and to have estopped the complainant from asserting or claiming infringement as to the processes, molds, and methods of manufacturing car wheels used by the Wells & French Company, and held to be no infringement of the complainant's patent.

The complainant thereupon filed exceptions to the answer, the exception to the defense of res judicata being that the decree actually entered in that suit was as follows: 'It is ordered, adjudged, and decreed by the court that this cause be, and the same hereby is, dismissed, without prejudice, at the complainant's cost. ' This exception upon hearing was sustained, the court deeming itself at liberty to refer to the record of the prior action and thereupon, by leave of the court, the defendant withdrew and struck out the defense of res judicata, and the complainant below filed his general replication to the answer, and which also suggested that the answer was inconsistent and insufficient with respect to the denial of infringement. On December 15, 1903, the cause was ordered set down for hearing on the pleadings, no proofs having been taken. On January 14, 1904, the hearing of the cause upon the pleadings was postponed at the request of the complainant, with leave to him to take proofs within 10 days. On January 23, 1904,...