United States Mitis Co. v. Detroit Steel & Spring Co.

• Decision Date: 19 May 1903
• Docket Number: 1,151.
• Citation: 122 F. 863
• Parties: UNITED STATES MITIS CO. v. DETROIT STEEL & SPRING CO.
• Court: U.S. Court of Appeals — Sixth Circuit

122 F. 863

UNITED STATES MITIS CO. v. DETROIT STEEL & SPRING CO.

No. 1,151.

United States Court of Appeals, Sixth Circuit.

May 19, 1903

Henry N. Paul, Jr., and Jos. C. Fraley, for appellant.

Wells Angell, Boynton & McMillan (Cyrus E. Lothrop, of counsel) for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

RICHARDS Circuit Judge.

This was a suit in equity, brought by the appellant, which was the complainant below, to restrain the alleged infringement of a patent for an improvement in the process of manufacturing castings from wrought iron and steel by adding aluminum, and incidentally for an accounting of profits and an assessment of damages. The bill was verified by the secretary of the complainant company, who affirmed that the statements it contained were true, to the best of his information and belief, and contained interrogatories calculated to compel the defendant to disclose certain facts respecting the process it used in manufacturing castings from wrought iron and steel by adding aluminum, which would throw light upon the question whether it was guilty of the infringement charged, or not. The bill was filed April 10, 1899, and a subpoena was issued and served that day, requiring the defendant to appear on the first Monday in May (May 1, 1899) and to answer on the first Monday of June (June 5, 1899). The patent sued on did not expire until July 8, 1899. No application for a preliminary injunction was made by the complainant. The defendant did not plead until July 27, 1899 when it demurred to the bill, because, first, it was not properly verified; second, upon the facts pleaded, the complainant was not entitled to any equitable relief; and, third, by reason of laches the complainant was not entitled to an injunction, the patent having less than three months to run after the bill was filed. On June 4, 1900, the demurrer was argued and submitted, and the court of June 16, 1902, sustained the demurrer and dismissed the bill, 'but without prejudice to the complainant's right to proceed at law for damages and profits. ' From this decree an appeal was taken to this court.

It appears in the bill that the complainant became the owner of the patent on May 25, 1886. On April 26, 1895, it filed a bill in the United States Circuit Court for the Eastern District of Pennsylvania against the Carnegie Steel Company, Limited, alleging infringement. On July 11, 1898, that court awarded a decree in its favor, adjudging the patent valid, and sustaining the charge of infringement. 89 F. 343. From this decree an appeal was taken to the Circuit Court of Appeals, and on October 21, 1898, the decree below was affirmed by stipulation. 90 F. 829, 33 C.C.A. 387. In this case not only was the validity of the patent upheld, but the nature and limits of the patented improvement defined. Within less than six months after the determination of the litigation with the Carnegie Steel Company, Limited, this suit was instituted.

1. The court below apparently took the view that its jurisdiction in equity was dependent upon the right of the complainant to a preliminary injunction upon the bill as filed, and therefore held the verification upon information and belief insufficient. But there was no attempt to use the bill as evidence to secure an injunction pendente lite. Nor was there any need to do so, in order to sustain the jurisdiction of the court. The bill was filed April 10th. The patent did not expire until July 8th. Under the rules the answer of the defendant was due June 5th, more than a month before the patent expired. The bill, after describing the patent, averring its ownership by the complainant, and setting forth the adjudication sustaining it, charged the defendant with infringement, and called for answers to certain interrogatories calculated to clear up any doubt upon the point of infringement. If the defendant had answered upon the rule day, June 5th, admitting the use of the patented process, or if it had failed to plead, and allowed the bill to be taken pro confesso, in either event the complainant would have been entitled to a permanent injunction a month before the expiration of the patent. The fact that the defendant failed to comply with the rules cannot prejudice the complainant. The complainant had reason to expect the answer on the rule day, and on each day thereafter until the defendant filed its pleading. For these reasons, it was not necessary to verify the bill in positive terms. Hughes v. Northern Pacific Railway Co. (C.C.) 18 F. 106, 110; Black v. H. G. Allen Co. (C.C.) 42 F. 618, 622, 9 L.R.A. 433; Burns v. Lynde, 6 Allen, 305; Moore v. Cheeseman, 23 Mich. 332; Robinson v. Baugh, 31 Mich. 290, 293; Hawkins v. Hunt, 14 Ill. 42, 44, 56 Am.Dec. 487. Sand Creek Turnpike Co. v. Robbins, 41 Inc. 79, 81.

2. What has thus far been said indicates the view we entertain-- that the bill was filed long enough before the expiration of the patent to give a court of equity jurisdiction of the case. The bill was filed nearly three months before the expiration of the patent, and contained prayers for a preliminary and a perpetual injunction. The patent had yet a month to run after the defendant was...