Truman v. Holmes

• Decision Date: 21 February 1898
• Docket Number: 376.
• Citation: 87 F. 742
• Parties: TRUMAN v. HOLMES et al.
• Court: U.S. Court of Appeals — Ninth Circuit

87 F. 742

TRUMAN v. HOLMES et al.

No. 376.

United States Court of Appeals, Ninth Circuit.

February 21, 1898

Appeal from the Circuit Court of the United States for the Northern District of California.

John L Boone, for appellant.

M. A Dorn, D. S. Dorn, and Chas. E. Nouges, for appellees.

Before GILBERT and ROSS, Circuit Judges, and HAWLEY, District Judge.

HAWLEY District 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 breaking-carts. Appellant claims that the right, title, and interest in said invention and letters patent have been assigned to him in the territory named, and that by virtue thereof he is entitled to sue for and recover all damages and claims for past infringements. He prays for an injunction, and for such other and further relief as in equity he may be entitled to. It appears from the record that on July 16, 1886, Putnam sold and assigned to Truman, Isham, and Hooker all his right, title, and interest in and to the patent for the territory 'known and described as 'San Francisco County, State of California,' and no other place or places'; that on February 28, 1893, Truman, Isham, and Hooker assigned said patent to Truman, Hooker & Co., including 'all past damages for infringement, royalties, or profits'; that on March 30, 1893, Truman, Hooker & Co., as plaintiffs, commenced an action at law in the circuit court of the United States for the Northern district of California against Henry E. Holmes & Co. (appellees herein), to recover the sum of $20,000, as damages for alleged infringements of the patent; that the trial of that suit resulted in a verdict in favor of the plaintiffs therein in the sum of $150 and costs; that a writ of error was thereafter duly taken from said judgment to the circuit court of appeals, and was there affirmed (Holmes v. Truman, 14 C.C.A 517, 67 F. 542); that on May 28, 1895, Truman, Hooker & Co. assigned said patent to I. J. Truman (appellant herein), together with 'all claims and demands against past infringements.' This suit was commenced on March 10, 1896. The circuit court (Judge McKenna presiding) dismissed the bill upon the ground that the construction of the patent confines it to a cart with straps beneath the axle, and that the respondents' carts, not being of that construction, do not infringe. But he afterwards set the decree aside 'because, in addition to the points decided, there are other points in the brief, which, by inadvertence, did not receive the deliberate consideration and judgment of the court.' The order of submission was therefore vacated, and the case came up regularly before Judge Morrow, and a decree was entered dismissing the bill. This appeal is from the last decree.

It is argued by appellees that the order of the circuit court dismissing the bill should be sustained upon various grounds, and a dozen or more reasons are given, each of which is claimed to be a complete defense to this suit. It is insisted, among other things, that the only object of bringing this suit is for the purpose of obtaining an accounting for the past infringements which were involved in the case at law, previously heard, determined, and settled. If this be true, it necessarily follows that this suit was properly dismissed. Section 723 of the Revised Statutes of the United States provides that 'suits in equity shall not be sustained in either of the courts of the United States in any case where a plain, adequate, and complete remedy may be had at law. ' A court of equity takes cognizance of a suit for the infringement of a patent when the complainant is entitled to relief by injunction; but, in order to sustain a suit of this character, it must affirmatively appear that some ground of equitable jurisdiction exists, or that the complainant has no plain, speedy, or adequate remedy at law. Equity will not entertain a suit which simply involves the ascertainment of damages and profits for past infringements. Root v. Railway Co., 105 U.S. 189, 215; Hayward v. Andrews, 106 U.S. 672, 1 Sup.Ct. 544; Clark v. Wooster, 119 U.S. 325, 7 Sup.Ct. 217; 3 Rob.Pat. § 1086; Walk. Pat. Sec. 572. Appellant, however, contends that the evidence shows that appellees had been engaged in the manufacture of carts of the same general construction since the judgment was rendered in the action at law, as before, and that, this court in that case having held that they were guilty of infringing appellant's patent, the decree dismissing the bill in this case is erroneous. In Holmes v. Truman, 14 C.C.A. 517, 67 F. 542, the direct question here involved was not presented. In that case the defendants admitted that they constructed a cart differing from that of the plaintiffs only in the fact that the forward ends of the straps, instead of being attached directly to the shafts, are attached to a crosspiece which connects the two shafts in front of the seat, and that, instead of being continuous straps, they were formed of two pieces fastened together by nut and screw at the angle underneath and behind the axle. It was upon these facts that the contention was there made that the plaintiffs must be held to the specific construction described in their letters patent, and it was in reply to this contention that the court said:

'We do not so construe the patent. The crossbar between the shafts is substantially a part of the shafts. It makes no difference, so far as the function of the straps is concerned, whether they are attached to the shafts, or attached to a crossbar which connects the shafts; and it makes no difference whether the straps are one continuous piece, or composed of two. It is true that the plaintiffs' patent does not cover any arrangement by which the seat and the footboard may be made to move in unison. Those results were obtained in the butcher's cart. But it is a fair interpretation of the plaintiffs' patent to say that they are protected in the use of a cart in which the shafts are placed directly upon the springs, and the footboard is sustained beneath the axle by straps; and it is unimportant whether the straps are attached to any particular place along the shafts, or to a crossbar between the shafts, or whether they are made of one piece, or of two or three pieces.'

The only testimony cited by the appellant in support of his contention that the facts in this case are substantially the same is that of M. P. Holmes, in reply to certain questions propounded to him by appellants' counsel, as follows:

'Q.Have you since 1894 manufactured any carts having straps that supported the footboard? A. Yes, sir; a strap that supports the footboard. It must have something to support it. Q. What was the front end of such straps attached to? A. To a crossbar that is connected with the shaft. Q. What was the rear end of the strap attached to? A. Some of them came back here to the rear. The footboard came up in front of the axle, and they were attached to the seat. Those carts that had a rack behind were made in that way. They did not extend back of the seat or axle at all. Others we have made for the purpose of putting a footboard on them. We have put two rods from the shaft down through a short piece of iron that holds that footboard on that rack. We made them in that way.'

When this witness answered, with reference to the straps, that 'some of them came back here to the rear,' it is evident that he was illustrating his evidence by pointing out, upon a model, drawing, or exhibit, some point in front of the axle, because...