LORD 11. WHITEHEAD· & ATHERTON MACHINE 00.
..
801
and salutary principle of law thltt courts will not open a decree and admit new defenses and newly-discovered evidence, unless it appear that the defendants could not with reasonable diligence have discovered the facts which are sought to be introduced when the pleadings were drawn and the testimony taken. Some embarrassment is caused by the death of Mr. Gifford, who was for a period of more than 12 years previous to his decease the counsel of the defendants. He was a gentleman of such exceptionally high character that all men knowing him would be inclined to accept as true his simple statement respecting any transaction as he understood the truth to be. He cannot, however, be interrogated; but it is quite clear from the evidence that both he and Mr. Clark, corporation in these proceedings, had who represents the the means of ascertaining, and with ordinary diligence could have ascertained, as early as the spring of 1873, the true date of Mr. Conant's application for the patent. Without expressing any opinion upon the other questions involved in the motion, and which have been so elaborately and ably argued by the respective counsel, it is quite clear that upon the ground of laches alone the application to open the calle ought to be refused; and it is accordingly so ordered.
LORD and others, Ex.'rs v. WHITEHEAD & ATHERTON MACHINE Co. and others. SAME v. WHITJjJHEAD and others. (Cirouit OOU1·t, D. Massaohusetts. August 26,1885.) PATENTS FOR INVENTIONS-EQUITY JURISDICTION-INFRINGEMENT-ExpIRATION OF PATENT-DISCOVguY-ACCOUNT-HEMEDY AT LAW.
A hill in equity hrought for the infringement of a patent which has expired previous to the bringing of the suit will be dismissed for want of jurisdiction, notwithstanding it avers that defendants manufacture and use the infringing machines secretly, and that complainant is ignorant of the number of machines so used, and unahle to estimate the amount of damages, and prays for an account of profits, the to complainant from said infringement, other than the profits, being sued for in a pending action at law.
In Equity. B. F. Thurston, D. H. Ricp, and A. Eastman, for complainants. F. P. Fish, F. T. and A. M. 1\[oore, for defendants. COLT, J. Thef'le bills in equity are brought for the infringement of letters patent granted to Edward Lord, January 9, 1866, and which ex.pired previous to the bringing of the suits. The defendants have demurred to the bills on the ground that they disclose no cause of action cognizable in a court of equity, and that the complainants have v.24F,no.14-51
802
FEDERAL· REPORTER.
a plain, adequate, and complete remedy at law. The demurrer is based upon the principle laid down in Root v. Railway Go. 105 U. S. 189. In that case suit was brought for the infringement of a patent that had expired prior to the filing of the bill. The bill stated that the complainant was ignorant, and could not set forth how many of the patented articles the defendant had used, but that he believed the number was large, and that the defendant had realized great gains and profits therefrom. The prayer of the bill was for an account. The defendant demurred to the bill, and the demurrer was sustained on the ground that a bill in equity for a naked account of profits and damages against an infringer cannot be sustained; that such relief, ordinarily, is incidental to some other equity, the right to enforce which secures to the patentee his standing in court. In the present bills the complainants, instead of the simple allegation that they are ignorant of the extent of the infringement and the amount of profits, and praying discovery, set ont special allegations in the bill relating to the discovery sought j such as that the infringing machines were made by the defendants in difforent rooms of their factory, and put together either in the factory, or at the place of business of the purchasers in distant parts of the country; that some have been shipped to foreign countries; that sometimes the outer doors of defendants' .factory have been locked, and sometimes the purchasers and users of such machines lock the doors of their factories while the machines are in use; that the defendant corporation succeeded to the business of Whitehead & Atherton, a copartnership, and the complainants are unable to determine the precise time when such transfer was made, and what machines were then in process of construction, and whether or not the machines made about the time of the transfer were made, by the defendants or by Whitehead & Atherton; and that by reason of the conrse and manner of conduct by the defendants, and the use of said machines by the purchasers aforesaid, and of others matters connected with the business, the complainants are ignorant of, and not able to ascertain, the number or size of the machines made and sold by defendants in violation of complainants' rights, and are unable to estimate the amount of darrrttges. The complainants pray for an acconnt of profits; "the damages to your orators from said infringement, other than said profits, being sued for in an action at law now pending in this honorable [email protected]" In substance, we cannot but consider these bills as the ordinary bills brought for the infringement of a patent, and we cannot see how they can be sustained under the rule laid down in Root v. Railway Go., supra. It is contended that by reason of the discovery asked for, the complainants have a standing in a court of equity. At least since the law authorizing the examination of parties as witnesses, we understand the more general and hetter rule to be that equitable jurisdic-
LORD '11. WHITEHEAD &ATl:IERToN MACHINE CO.
803
tion will not attach for discovery simply, except in aid of a suit at law; but the partymllst invoke some other distinct equitable ground. And where the broader rule may be said to prevail, based upon the proposition that the court having acquired jurisdiction for the purpose of discovery, it will proceed and determine the whole matter in controversy, the plaintiff must allege that the facts concerning which he seeks a disclosure are material to his cause of action; that he has no means of proving these facts by the testimony of witnesses, or by any other kind of evidence used in courts of law; that the only mode of establishing them is by compelling the defendant to make disclosure; and that therefore a discovery by suit in equity is indispensable; and, further, if the defendant by his answer fully denies all the allegations with respect to which a discovery is demanded, the suit must fail. 1 Porn. Eq. Jur. §§ 223-230. These are not bills of discovery brought in aid of suits at law, and the allegations therein contained are not sufficient to support them, even under the broader rule of equitable jurisdiction adopted by some courts. But equitable jurisdiction is invoked on the ground of account. The account sought, however, must be incidental to some other equitable relief. Rout v. Co., supra. Stress is here laid by the complainants on the words of the court in Root v. Railway Co., that "such an equity may arise out of, and inhere in, the nature of theaccount itself, springing from special and peculiar circumstances, which disable the patentee from a recovery at law altogether, or render his remedy in a legal tribunal difficult, inadequate, and incomplete." These are actions of tort for which the plaintiffs are entitled to damages. In such cases the mere intricacy of the account does not furnish a ground for equitable interference. In Hipp v. Babin, 19 How. 271, Mr. Justice CAMPBELL, says: "No instances exist where a person who had been successful at law has been allowed to file a bill for an account of rents and profits during the tortious possession held against him, or in which the complexity of the accouuthas afforded a motive for the interposition of a court of chancery to decide the title and to adjust the account." In citing this in Root v. Railway Co., the court say: "These principles were announced in a case for the recovery of the possession of real estate held adversely, but they are of general application, and embrace as well the case of torts to personalty and infringements of patent and copy rights." See, also, Parrott v. Palmer, 3 Mylne & K. 632, 642; Higginbotltllm v. Hawkins, L. R. 7 Ch. App. 676; Smith v. London tf; S. W. Ry. Co. Kay, 4:08. The demurrers are sustained, and the bills dismissed.
804 FAY
FEDERAL BErOBTBB.
and others v.
ALLEN.
(Circuit (Jourt, N. D. New York. August 26,1885.) 1. PATENTS FOR INVENTIONS-INFRINGEMENT.
. 2.
held, infringed, as to the first three claims, by the spoke-throatel' manufactured by defendant under patents granted him Angust 10, 181;0, and October 11, 1881, respectively; and Locke patent of April 17, 1877, held, not infringed by same. SAME-ANTICIPATION-EvIDENCE.
Doane and Bugbee patent of .March 9, 1880, for spoke-throating machine,
'W here defendan t testified to having conceived, constructed, and pu bliely used the invention prior to the patentees, and was corroborated by numerous wik nesses, but. it appeared that each machine he had made before patentees completed theirs and placed it on sale had been taken to pieces after being tested, and before being put on sale, or used ot,herwise than for the purpose of testing, and that he only commenced the construction of the first maclllne placed on sale by him after the patentees had comp,eted their machine, tested it, and placed it in their ware-ruom i held, that antieipation was not established, and decree for complainant ordered. SAME-Uosni-BILL AS '1'0 ONE PATENT AND DECREE AS TO ANOTHER.
3.
Costs not awarded either party; the bill Leing dismissed as to one patent, and decree grant.ed as to the otIler.
.This was a suit for infringement of two patents on spoke-tbroating machines: the first granted Joseph R. Locke, April 17, 1877, No. 189,635, and afterwards assigned to complainant; the second granted complainant, as assignee of William H. Doane and George W. Bugbee, March 9, 1880, No. 225,355. The first three claims of the lat· ter patent were charged to be infringed. 'rne answer denied the valiuityand infringement of both, setting up as anticipations various earlier patents; also alleging prior public use of the Doane and Bugbee invention by Locke, the patentee of the above-named Locke patent, and by the defendant and others. The prior use by Locke relied upon consisted in a modification of the machine shown in the Locke patent, which was introduced by Locke shortly after the Locke patent was granted. This modification appeared to have only been tried at one test of the machine, which was then set aside and never used again, but was produced in evidence. The witnesses stated that the purpose of the modification was to reduce friction, and that it was not satisfactory. With respect to this use, It was contended by defendants that it was a use of the Doane and Bugbee invention with sufficient publicity to constitute anticipation. On the part of complainant it was contended that it was not such a use as suggested to Locke or any oj the witnesses the operation of the Doane and Bugbee patent. With respect to the defendant's use, defendant testified to having conceived the invention of the Doane and Bugbee patent in April, 1878, and made a rough sketch upon a board about that time to illustrate it, exhibiting this sketch to a person with whom he was talking; to have commenced, immediately after, the construction of a rna-
