Truman v. Carvill Mfg. Co.

• Citation: 87 F. 470
• Decision Date: 28 March 1898
• Docket Number: 12,093.
• Parties: TRUMAN v. CARVILL MFG. CO.
• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California

87 F. 470

TRUMAN v. CARVILL MFG. CO.

No. 12,093.

United States Circuit Court, N.D. California.

March 28, 1898

John L Boone, for complainant.

E. J Mize, for defendant.

MORROW Circuit Judge.

This is a suit in equity for the infringement of letters patent No 232,207, granted to De Witt C. Putnam on September 14, 1880 for improvements in breaking-carts. The complainant is the assignee, by a regular chain of assignments, of all the right, title, and interest in said invention and letters patent for the territory known and described as 'San Francisco county, state of California, and no other place or places. ' The patent has been in litigation heretofore in this court, and, on appeal, in the circuit court of appeals. Truman v. Holmes, 14 C.C.A. 517, 67 F. 542; Id., 80 F. 109; s.c. (on appeal) 87 F. 742. In Truman v. Holmes, 14 C.C.A. 517, 67 F. 542, which was an action at law, the validity of the patent was sustained on a writ of error to this court from the circuit court of appeals; and the judgment of the lower court, in favor of the complainant, in the sum of $150, as damages for infringement, was affirmed. In Truman v. Holmes and Truman v. Implement Co.,-- both being 'companion cases,' and suits in equity brought in this court for infringement of the same patent,-- the bills were dismissed, and the defendants held not to have infringed. 80 F. 109, affirmed on appeal 87 F. 742. Different constructions of the carts were involved in the action at law and the suits in equity, as will be seen from the opinions above referred to. The original claim of De Witt C. Putnam, as first presented to the patent office, read as follows:

'The improvement in breaking-carts, consisting in suspending the foot-board, E, By means of straps or hangers, F, form the shafts, seat, or that portion of the vehicle connected with the springs alone, whereby the seat and footboard have a common vertical movement, substantially as and for the purpose herein described.'

This claim was rejected on the ground that 'the patent of Jesse Winecoff, October 17, 1871, No. 119,956 (sulkies), substantially answers the claim. ' The applicant thereupon amended 'by erasing the entire specification, and substituting' a new one. The figures of the patent, as they are shown in the amended specifications and claim, will be found represented in 80 F. 112. The amended specifications and claim read as follows:

'My invention relates to certain improvements in that class of vehicles known as 'breaking-carts,' in which young colts are broken to harness. Carts of this description are usually provided with very long shafts, and the seat is placed on springs immediately over the axle, or at such a distance back that the driver is not in danger of being kicked by a fractious animal. In this class of vehicles the footboard is usually secured to the axle, while the seat is on springs; and it is therefore uncomfortable to ride upon, since, while the body of the occupant may move up and down, his feet mush remain stationary. My improvements consist in so attaching the footboard to the vehicle that it shall move in unison with the seat; the same spring which supports the seat serving as a spring for the footboard, as is more fully described in the accompanying drawings, in which Fig. 1 is a longitudinal section of my device; Fig. 2 is a bottom view. Breaking-carts usually have two wheels, A, only, and the springs, B, are secured both to the axle, C, and the shafts, D; said shafts being secured on the springs in the manner shown. In order to attach the footboard, E, to the vehicle, I place metallic straps or bands, F, in a proper position to hold the footboard; connecting these straps with the shafts and seat, and not with the axle. I have shown the straps connected with the shafts at the rear ends of, and forward of, the whiffletree bar. It will be seen by this construction that the rear ends of the shafts and the seat are supported upon the spring, B, while the straps, F, pass beneath the axle, and are bent up so that their rear and their front ends are secured to the shafts at points behind and in front of the axle, while the central portion does not touch it at all. The footboard, E, with its turned-up front portion, is then secured upon the bottom and front portions of the straps, F. Being thus entirely independent of any direct connection with the axle, it will have the same movement imparted to it by the action of the spring that the shafts have, and it will have none of the unpleasant jar that a stationary footboard, or one supported from the axle, will have; while the arrangement of the straps parallel with the shafts facilities the attachment of the transverse footboard, and makes a strong construction. Having thus described my invention, what I claim as new, and desire to secure by letters patent, is the braces or straps, F, having their ends secured to the shafts before and behind the axle, while the central portion support the transverse footboard, E, substantially as and for the purpose herein described.'

With reference to the interpretation that should be placed on this amended specification and claim, the circuit court of appeals, per Hawley, District Judge, delivering the opinion of the court in Truman v. Holmes, 87 F. 742, held that:

'The effect of the withdrawal of his original specifications and claim was to limit his patent to the specific invention as described in the claim of his amended specifications, to wit, to the construction of carts where the central portion of the straps 'extended beneath the axle';' citing Roemer v. Peddie, 132 U.S. 313, 317, 10 Sup.Ct. 98, and Morgan Envelope Co. v. Albany Perforated Wrapping-Paper Co., 152 U.S. 425, 429, 14 Sup.Ct. 627, and the cases therein collated.

At the outset, the defendant filed a plea, which was subsequently amended, in which it is averred, substantially, that the complainant was at all times from the 18th day of January, 1888, to the 31st day of January, 1894, one of the co-partners comprising the firm of Truman, Hooker & Co.; that the complainant on or about the 28th day of June, 1893, as such member of said firm, induced the defendant to accept an order from the said firm of Truman, Hooker & Co. for the manufacture for said firm of large quantities of carts, including 125 or thereabouts, containing and embodying said invention described in the patent numbered 232,207; that the defendant did thereupon manufacture said quantities of said carts so ordered by said firm, of the kind and in the manner and at the times agreed upon by said parties to said order; that defendant offered to deliver, according to the terms of said order, all of said carts so ordered, to said Truman, Hooker & Co., but that said firm neglected and refused to receive the same, or any part thereof, except about two-fifths of the number so ordered; that the defendant has since said refusal sold most of the remaining number of said carts so ordered by said Truman, Hooker & Co., including about 75 carts containing said invention, within the territory alleged to be owned by the complainant; that the defendant has never at any time manufactured for sale nor for use, nor sold nor used, within said territory, nor threatened to sell nor offered for sale within said territory, any other or greater number of carts embodying said invention than the number so ordered as aforesaid; that the material put into said carts by the defendant was and is of greater value than the complainant's patent therein, etc. As it was claimed in the amended plea that the carts had been made under a contract to manufacture them by Truman, Hooker & Co., of which firm the complainant was a member at that time, it was contended that there was no infringement by the defendant in selling that number of carts which had been refused by Truman, Hooker & Co. The plea as amended was, however, overruled; and the defendant duly filed its answer, denying infringement, and setting up want of novelty, prior use, and publication. Testimony has been taken, and the case now comes up for final consideration.

The fact that the carts made and sold by the defendant are like the carts for which the letters patent involved in this case were issued, is placed beyond controversy, not alone by the admission in the plea, but more particularly by the testimony of O.S. Carvill, the superintendent of the defendant company. He testified as follows:

'Q. (By counsel for complainant): Can you state whether or not the Carvill Manufacturing Company has since the year 1880 made or sold any carts in which the springs were mounted directly upon the axle, the shafts secured upon the springs, the seat secured directly upon the shafts over the springs, and in which the footboard was supported by a strap attached or connected to the shafts in front of the axle, and passed down underneath the axle? A. Yes, sir.'

To establish the validity of the patent, the complainant relies for the most part, upon the decision of the circuit court of appeals for this circuit, affirming the judgment of this court in the case of Truman v. Holmes, 14 C.C.A. 517, 67 F. 542, and contends that it is res judicata, and concludes the defendant from denying the validity of the patent. Besides setting forth, by appropriate averments in the bill, the fact that the patent has been sustained in the case relied on, the judgment roll was also introduced in evidence. The case was an action at law to recover $20,000 for infringement of the identical patent sued on in this case. It was tried before a jury, who returned a verdict for the plaintiff (complainant in this suit) in the sum of $150. A writ of error was thereupon sued out from the circuit court of appeals, which affirmed the judgment of the court below. However...