Sessions v. Romadka Romadka v. Sessions

• Citation: 145 U.S. 29,36 L.Ed. 609,12 S.Ct. 799
• Parties: SESSIONS v. ROMADKA et al. ROMADKA et al. v. SESSIONS
• Decision Date: 25 April 1892
• Court: United States Supreme Court

145 U.S. 29

12 S.Ct. 799

36 L.Ed. 609

SESSIONS v. ROMADKA et al.

ROMADKA et al.

v. SESSIONS.

April 25, 1892.

Bill by John H. Sessions against John M. Romadka and others for infringement of a patent. The master to whom the cause was referred found for complainant in the sum of $11,455.03; but exceptions to his report were sustained by the court, and a decree enterd for nominal damages, 21 Fed. Rep. 124. Both parties appeal. Reversed.

STATEMENT BY MR. JUSTICE BROWN.

This was a bill in equity by the appellant Sessions for the infringement of letters patent No. 128,925, issued July 9, 1872, to Charles A. Taylor, for an improvement in trunks.

The patent included several devices used in the manufacture of trunks: First, a yielding roller to be applied to the outside of the trunk; second, in spring catches to hold the trunk shut; third, in a brace of peculiar construction, applied to the outside of the trunk for the purpose of holding up the lid; and, fourth, in a spring arm for supporting the tray when truned up. In the specification the patentee made the following statement with regard to the spring catch, which was the only feature of the invention claimed to have been infringed in this sult:

'Instead of providing the top of the trunk with the usual straps for fastening it down, I attach to its front two spring catches, I, and to the top two tangs or plates, J, whcih lock into and are held by the catches. Each catch consists of a metal socket, e, provided with a hinged latch or hook, f, and with a flat spring, g, which bears against the lower end of the latch, and keeps its upper end pressed inward against the socket. The upper end of the latch or hook is provided with a prong, i, which extends through into the socket as shown in Fig. 4; the upper side of the prong being bevaled off, as shown. The tangs on the top or lid are provided with beveled ends and with holes or openings, as shown. When the top is pressed down, the tangs slide down into the sockets, and the prongs, i, of the latches, lock through them in the manner shown in Fig. 4, so as to hold the top or lid down securely. In order to unlock latches, it is only necessary to turn back the upper ends of the hooks or laches so as to draw the prongs out of the tangs. After the latches are turned back a certain distance the springs hold them in position, as shown in Fig. 1, and in dotted lines in Fig. 4, so that it is only necessary to attend to one of them at a time.'

The only claim which was alleged to have been infringed was the third, which reads as follows:

'(3) The spring catches, I, constructed and applied to the front of the body, as described, in combination with the tongues or hasps, J, on the top, when arranged to operate as set forth.'

The answer denied the validity of the patent and infringement of the same. After the testimony had been taken the plaintiff entered with the commissioner of patents a disclaimer of all the claims of the patent except the one in suit; and upon the hearing upon pleadings and proofs the court adjudged the patent to be valid, and that the defendants had infringed, and referred the case to a master to ascertain and report to the court the number of trunk fasteners made, used, and sold by defendants, and the profits which they had received and which had accrued to them since December 12, 1874, from their infringement, together with all damages in excess of such profits sustained by plaintiff and his assignor since that date. Subsequent to the entry of the interlocutory decree, which was opened for that purpose, and pending proceedings before the master, the defendants by leave of the court amended their answer, by alleging that the title to the patent was in the assignee in bankruptcy of one Poinier, who assigned the patent to the plaintiff subsequent to his adjudication in bankruptcy. The bill was also amended by averring that the assignee never accepted title to the patent, but neglected and refused to assert any claim thereto, and that he is now estopped from claiming any title or exercising any dominion over such patent or the invention thereby secured, and is also barred by the provisions of the bankruptcy act requiring suit to be brought within two years after the accruing of any cause of action. In his report, made under the order of the court, the master found that the testimony left no doubt that 'at the date of the granting of the patent to Taylor the only known device for accomplishing the results produced by the trunk fastener was the ordinary trunk strap used in conjunction with the simple dowel pin. It seems, therefore, that the profits for which the defendants must account to complainant under the decree of this case are to be found by arriving at the cost of making and applying the strap and dowels, and deducting therefrom the cost of making and applying the infringement trunk fastener manufactured and sold by the defendants.

Figuring upon this basis, the master found that the sum of $11,455.03 had been saved by the defendants by the manufacture and use of 2,500 gross of fasteners admitted to have been made and used by them, over what it would have cost them to have made and applied the straps and dowels necessary and proper to have been used for the same purpose in lieu of such infringing fasteners. No computation was made of damages, for the reason that the testimony showed that the profits allowed by him largely exceeded any actual damage sustained by the plaintiff. Exceptions were filed by both parties to this report; and a final decree was entered, sustaining the exceptions filed by the defendants to the master's report, vacating and setting aside such report, and decreeingnominal damages for the infringement. 21 Fed. Rep. 124. Both parties appealed from this decree to this court.

Chas. E. Mitchell, for plaintiff.

F. C. Winkler and J. G. Flanders, for defendants.

[Argument of Counsel from pages 33-37 intentionally omitted] Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

1. Defendants attack the title of the plaintiff to this patent upon the ground that Poinier, who bought the patent of Taylor in 1872, and subsequently, in 1878, sold it to Sessions, had prior to such sale, and in September, 1876, been duly adjudicated a bankrupt in the district court of the United States for the district of New Jersey, and an assignee appointed, in whom, it is claimed, the legal title to the patent vested. It seems, however, that Poinier did not include this patent in his schedule of assets, upon the ground, as he said, of its being unproductive property and of no value. Indeed, all that he seems to have done with the patent was to make a lot of trunk fasteners in 1872, which proved to be failures, and which appear to have been the cause of his insolvency. He made no others for the three years before he went into bankruptcy. On May 15, 1877, he received his discharge, and on November 27th of the same year his assignee was discharged. On June 12, 1878, 13 months after Poinier had received his discharge, and 6 months after his assignee had been discharged, Sessions bought a shop right of Poinier, for which he paid him $500, and in the same year purchased the patent itself, for which he paid him $1,000 additional. Mr. Shepard, who acted as the agent of the plaintiff in making this purchase, testifies that he went to Newark on the morning of June 6, 1878, and inquired for Henry W. Poinier. 'I was informed that one Mr. Miller was his assignee, and that I could learn of his affairs by seeing him. I then went to the office of Mr. Miller, and found him there, introduced myself, and told him that I had come to see him about a patent for a trunk fastener which was owned by Henry W. Poinier, and under which said Poinier had been making trunk fasteners; and I asked Mr. Miller if he would sell me said patent, or give me a shop right thereunder, as the assignee of Mr. Poinier. Mr. Miller replied that he could not do so; that the estate was all settled up; he had made his return to the court, and had been discharged as assignee, and he had no power to do anything in the matter. I asked him what I could do, and he said the only thing was to go to Mr. Poinier; that Poinier was the only one who could give me any title. * * * I learned that Mr. Poinier was in Rochester.' While the assignee does not recollect the conversation, there is nothing to disprove Mr. Sessions' version of it; nor is it strange that Miller did not recollect it, as he acted as assignee in some six or seven hundred cases, and could hardly be expected to remember all the transactions connected with them. It is undisputed that Shepard went to Newark to find Poinier, and subsequently went to Rochester and found him there. The first assignment from Poinier was executed August 16, 1878, and conveyed only the title to the patent itself; but a second assignment, bearing date September 24th, included also all rights of action for infringement from the date that Poinier himself acquired the title to it.

While, under the provisions of the bankrupt law, the title to this patent undoubtedly passed to the assignee in bankruptcy of Poinier, it passed subject to an election on his part not to accept it, if, in his opinion, it was worthless, or would prove to be burdensome and unprofitable; and he was entitled to a reasonable time to elect whether he would accept it or not. File Co. v. Garrett, 110 U. S. 288, 295, 4 Sup. Ct. Rep. 90; Sparhawk v. Yerkes, 142 U. S. 1, 12 Sup. Ct. Rep. 104; Amory v. Lawrence, 3 Cliff. 523, 535.

In this case the assignee had taken a year to wind up the estate, and had given no sign of his wish to assume this property, if indeed he knew of its existence. On being asked with reference to it by the proposed purchaser, he replied that the estate was all settled up, that he had no power to do anything in the matter, and that Poinier was the only one who could give a title. A...