(lONSOLIDATED ROLLER-MILL CO. II. GEORGE T. SMITH MIDDLINGS P. CO.
805
CoNSOLIDAT1CD ROLLEJt.MILL Co. V. GEORGE PURIFIER CO.
T.
SMITH MIDDLINOB
(OlrcuU COUrt, E. D. Michigan. October 7, 1889.)
L
CoURTS-eOUITy-FORMER ADJUDICATION.
While one court will ordinarily, as matter of comity, defer to the opinion of an· other court of co-ordinate jurisdiction with regard to the validity of a patent, it is too late to call upon it to do so after it has come to a diflerent conoluslon, and entered a deoree in ignorance of the prior adjudication.
S. PATENTS FOR INVENTION-RES ADJUDIOATA. ", A decree declaring the invalidity of a patent is not a proceeding in rem, and does not prevent the same or a di:tIerent plainti:tI from prosecutinllasuit against another defendant, and establishing its valiillty upon the same or di:lterent evidence. 8. SAME-INFRINGEMENT. Patent No. 222,895. to William D. Gray, for an improvement in roller grinding mills, does not cover a machine having no lever or swinging arm which may be raised or lowered for a vertical adjustment, and no rod corresponding to the roa. G, of the Gray patent, and fitted at either end with devices for horizontal adjustments. .(SyU,abus by the Court.)
On Motion for Preliminary Injunction. This was a bill in equity to recover damages foT' the infringement of letters patent No. 222,895, issued to William D. Gray, December 28, 1879, for an improvement in roller grinding mills. The invention covered by the patent was stated in the preamble to consist "in a peculiar construction and arrangement of devices for adjusting 'the rolls vertically, as well as horizontally, whereby any unevenness in the wear the rolls, or in their journals or bearings, may be compensated for, and the grinding or crushing surfaces kept exactly in line;" "and also in the special devices for separating the rolls when not in action, and in other details." The defense raised upon this motion is fUlly lltated in the opinion of the court. George H. LothrlYp, for plaintiff. Parker &: Burtoo, for defendant.
of
BROWN,
judicata is taken by the defendant against the issue of this injunction.
J. A preliminary objection in the nature of a plea of res
Prior to the opinion of this court in the case of RoUer-MiU Co. V.Coomh8, 39 Fed. Rep. 25, sustaining the validity of the plaintiff's patent, a bill had been filed in the western· district of Wisconsin by one Allis against Freeman to compel the defendant to desist from using a machine which 'Was claimed to infringe several patents, among which was the Gray patent, upon which this suit is based. A decree was made dismissing the bill;! and it would appear from a letter of the learned judge to the solicitors, put in evidence in thiscasl', that the court' was of the opinion that the Gray patent had been anticipated by an English patent to one Lake, and' hence was invalid for want of novelty. It appeared that plaintiff in that case claimed and perfected an appeal to the supreme court from 'No opinion filed.
v.40F.no.6-20
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vot
,
this decree, and the cause was docketed in that court in October, 1887. llthia app,eal, upon the or by the consent of the appellant. Had the decision of the court in' that case been called to our attention at the time the Coombs Case was. argued, ·it is quite probable that, out of the usual comity obtaining among courts of co-ordinate jurisdiction in tpi!;cla,ss of Cllses, we should have waived oUr oWn views, and deferred toit;sQ' far, at least, as it cOvered the issues involved ,in that case., It seems. however, that the reason for' dismissing thebil.l in the Wisconsin case was not then known, an<l'Uoatress was laid upon it in the argument oftheCoombs ease. JIavinge:JCpressed our own opinion of the patent iii that case;'ltJs now Joo late to,claiinthat, as matter of comity, we ought to follow the Wisconsin case. It is equally clear that it does notcrea:te ;a case of Not only is"ll,o'record produced showing upon what ground the bilLwils dismissed,but neither the plaintiff nor defendant in this suit were partie$ to that. A decree declaring the invalidity of the patent is in no sense a proceeding in rem, and doesllotprevent the same or a different plaintiff from prosecuting a suit against another defendant, and establishing its validity uPQu' ditfer!"tlt, 'or "even upon the same" evi':<!ence,.T,hist>reeise,1hing,was dO[le in Jrtger8QU v. Jewett; 16,lUatchf. ,878, which was also a, pill iJreq.uity.for the il}fring{mlent.Qf a patent. Tn .!Jefeps6,it was. argued that the:pIllintiffhlld previously filed a bill againlft 'J<Ufj:'erent; for an infrl.ngeIll/'lnt oUhe same patent, the, defen$e, of ,which had: ,by aneTopbam, under whQm,the defenda,nts ,intbat auit¥aB well l\S in: the; auJt undercQnsi4erauon, -were t, WP-S . held .by: iJudge WALLACE",that, ass.uI)ling. that :Tophallilwal!\ to t4e .former suit, .thedefeno.ants coqld not avaU the decree'inhia,fa.vQr upon the ,ground. that there was a Jll! The same ruling by:M.r. BLATCHFORD in respect to the same decree in Stamping Co. y.Jew:ett, 18 Blatchf. 469,7 Fed. Rep. 869.. , The facts, qfthe much more conclusive against the eswppel,as neither ,parties to this suit were parties or privies to the case of Allis v. F'refrTn(l,n· . 2.,:(n of ,qccasiQn, tpcQp.sider the in issue in 'thUl QaSEl. all!icameto the follqwlng conclusions:. " i i . 'i " ' ·. : , (1) Thlttit had.notbeen by the Lake :by; ,any other,Qf the. ;tllird, J' alld ;valid. , " I .f' (2) That the patentee was<:uot 4eba.rred, the, benElfitof the docJ::l,J the fact that, his originaicla.ims for a .CQmbinatiqn,oi IJ. hy anYItl!lthod had olaims i ,. "
: ;',' (8).
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ltdiQ, '.:;'" "
patent.
CONSOLIDATED ROLLER-:MILLCO, l1. GEORGE T.' SMITH; MIDDLINGS P.
Co.
307
It waS not,:however, intended to decide that the Gray patent covered all methods of horizontal and vertical adjustments, or methods of making such; adJustments by means essentially different from those employed by the 'patentee. Indeed, this could not have been done without disregarding the limitations put by the patent-office upon the original claims, as' well as the state of the art as it existed at the time the patent was issued. Other methods of adjusting rolls, both vertically and hori.. zontally,existed before Gray filed his application, and in at least one there was 'a combination of both adjustments as applied to the same roll. That the defendant has produced a machine which, accomplishes the sameiesu1tsas the plaintiff's will not be seriously disputed, and the only question is whether it has accomplished them by the same, or by an essentially different, device. These results are four in numher: (1) A vertical adjustment at each end of the movable roll; (2) the horizontal grinding adjustment. by which the distance between the two rolls is kept precisely the same whilt1the rolls are in operation; (3) a spring device, by which therolls are made to yield to a breaking strain whenever a nail or other harel' sUbstance enters between them; (4) a stop and holding device, by which the'rolls are spread apart when not in operation, and aretlirowb' together again without a new adjustment. To,accomplish these results, the patentee makes use of-First. Two rolls, oneofwhich is fixed, and the other adjustable. ' His specification to both rolls may be made adjustable, but in what manner is not stated., Indeed, it is difficult to see how this could be doile without taking away from the com bined devices applied to otber roll some one of the elements, which would destroy the integrity of the combination. Second. An upright, swinging arm at each end of the adjustable roll, upon the pivot of which the roll is moved in a vertical direction. Third. A rod, G, at one end of which ,are devices for the grinding adjustment, and a spring urging the upper end of the arm inward, but yielding to a breaking strain, and at the other end the stop and holding devices for the spreading adjustment. In defend,ant's machine 'bo.th rolls are adjustable. To one is attached the spring and a nut and eccentric for vertical adjustment, and to the other the grinding ,adjustment and the lltop and holding device. There is no lever .01' s.winging arm, but the journals of both rolls rest upon horizontal -shafts, one of which may be raised and lowered for the vertical adjustmebt, and the other of which slides forward and back, carrying the seeondroll to and from its fellow. There is no rod, G, fitted at either end with the several devices for horizontal adjustment, and nothing properly corresponding to:it, since the shaft attached to one of defendllllt's rolls corresponds about as nearly with it as the one attached to the other· .If we wei-eto attempt to locate it, we should haveto say that it was di.yided jnt6' two separate ,Parts, by one of which the vertical adjustment is Rc;qQlnplished; while in plaintiff's patent this adjustment is made by pf;a,swinging arm, and.not bymeans of therod.. This rod, and ·the upright swinging arm, we regard a,s. of. tl;le essence of tile plaintiff's patent. Should defendant's device be adjudged an infringement, we
808
nDERAL REPORTER,
vol. 40.
should not know where to draw the line, providing the, defendant's device accomplished the four results. This, evidently, was· not the scope of the Gray patent, since the original claims for the combination of those adjustments had been rejected by the commissioner. While the sliding support might be, under certain circumstances, a mechanical equivalent for the sWinging support, in view of the state of the art, and the limitations upon plaintiff's claims, we cannot consider it so in this case. Under the view we have taken, we find it unnecessary to consider the claims separately. The departure of the defendant's machine from the underlying theory of the plaintiff's is too radical to require. us to descend to details. Weare clear in our opinion that the injunction Should be denied.
HARLAND ". UNITED LINES TEL.
(Circuit Court, D. CO'/1,necUcut. November 14,1889.) . B'JmBRAL COURTs-:JURISDIOTIO:N:""PROCEEDINGS IN REM.
Although Aot Congo March 8, 1887, authorizes an original suit bropgbt In. tile circuit court, whel"tl jurisdiction is founded on the. fact of diverse citizenship solely) to be brought in tlie district of the residence of either plaintit! or defendant, ana the statutes of Connecticut permit the attachment of·the: property, located it! the state, of a non-l"tlsident defendant, .without personal .service on him, and in the absence of voluntary appearance, SUbjection of such property to a jUdgment in rem, Rev. St. U. S. §S 914,915, authorizing the practioe and mOdes of procedure in eral courts to be conformed to those of the respeotive states wherein such. courts are held, and authorizing the same l"tlmedies by al"tl provided by the laws.of those states, do not give a United States oircuit court sittingin Connecticut jurisdiction of proceedings .in ,+gainst the property of a non-resident defendant, who has not been personally servador appeared.
At Law. On demurrer to plea. Morris W. Seymour and Wm.G" Wilson, for plaintiff. W. W. Hyde and Robt. G. Inge:rsoU,· for defendant. SHIPMAN, J. The question at' issue in this action at law arises upon the plaintiff's demurrer to the defendimt's plea: to the jurisdiction oitha court. The complaint alleges that the plaintiff is·acitizen of the state of Connecticut, and that the defendant is a corporation existing under the laws of the state of New York, and a citizen of said state, and carrying on business in the state of Connecticut, and having an office in Hart·ford, in said state. ' :;ection 910 of the General Statutes of Connecticut provides as follows:
"When the defendant is not a resident 01' inhabitant of 'this state, and has ·estate within the same which is attached, a copy of the process and declaration 01' complaint. with a return describing the estate. attachl:'d.shall be left by the officer with the agent or attorn!lY of the defendant in this. state; and · when land is attached a like copy shaH be left intheolli.ce of the town-clerk of the town. where the land lies. as in eases where the defendant belongs to this state: and. if the defendant has no agent or attorney within this state, a like copy shall be left with him who has charge or possession of the'estate at'ached."
HARLAND V. UNITED LINES TEL.
co.
809
Section 908 of the same statutes provides that"In actions against towns, societies, communities, or corporations, theservice of the process by the officer by leaving a true and attested copy of it, and of the accompanying declaration or complaint, with or at the usual place of abode of their clerk, or either of the selectmen or committee, or the secrAtaryor cashier, or, in case of a private corporation having no secretary or cashier. at the principal place in this state where such corporation transacts , its business, or exercises Its corporate powers, shall be sufficient. When a corporation doing business in this state has no secretary or cashier resident in this state, service of process upon a resident director shall be good and effectual service. " The return of the marshal declares that he attached, as the property of the defendant, divers articles of personal property situated in the offices of the defendant in five towns of the state, viz., New Haven, Hartford, Meriden, Bridgeport, and the borough of Willimantic, in the town of Windham, and left true and attested copies of the writ, and of his indorsement thereon, with five named persons,' who have "the charge and possession of said estate of the defendant so attached" at the several places before named; "the defendant not being a resident ar inhabitant oUhis state, and not having any known agents or attorney in the same, being absent therefrom." By chapter 9 of the Public Acts of Connecticut, which were passed in 1889, the fixtures of a telegraph company in this state can be attached in the sarne manner as real estate is attafJhed in civil actions, by the officer's lodging in' the office of the secretary of state a certificate that he has made such attachment. Under an order which was made after the foregoing sprvice, and which permitted an additional attachment, the marshalatt;whed the wires, posts, etc.,_ of the defendants in this state, in the manner provided in said statute, and also left a copy of the writ, application,and order, and of his indorsement, "at the principal office of the defendant in this state, and also with its attorneys," who had entered jJ.1irnited appearance in the case. The defendant pleaded to the jurisdiction, because, after alleging that it was and is a foreign corporation, "said w.rit was not otherwise served upon the defendant than by the officer's making a pretended claimed to attachment of certain personal property which the be the property of the defendant, and leaving a copy of said writ and complaint with the agents in charge of certain offices of the Postal Telegraph Cable Company in the state of Connecticut, and with the secretaryof the state of Connecticut, as will appear from the officer'sretum on said writ indorsed. No service of said writ and complaint was made, or attempted to be made, on any officer of said defendantcQmpany." The plaintiff demurred to the plea. Under the admissions of the able couDsel for the respective parties, but a single question arises upon the demurrer. The defendant admits that by the proper constructfon of the act of March 3, 1887, a foreign corporation defendant may be found within the district which is the residence of the plaintiff; and if so found, and duly served withprocess, it can, when the jurisdiction is, based upon thefact of diverse citizenship, properly be sued in the district 'of the resid'ence.of the plaintiff.. As-
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810
.' FEDERAL ItEPORTER,'Vol. 40."
suming that this construction, which bas been sanctioiledby a number of decisions of (Jircuit courts, the next guestion which would naturally be considered iswhethEir' any personal ,service was made upon the defendant.' 'The plaintiff, lnthe last brief of his. counsel; properly admits that up to the present time ,no such service has been made, and no such appearance has been entered by it, as would plaintiff to a,iudgment:in perscmam, but contends that under the act of March 3, 1887, a Judgtnent can properly be rendered against the defendant's property which is situated in this state, and was attached in this suit. His argument, briefly stated, is that whereas, the statute of Connecticut permits the attachment of the property,located in this state, of a non-resident defendant, without personal service upon him,and, in the absence of his voluntary appearance, the subjection of such property to a.judgment in rem; and whereas, sections 914 and' 915 of the Revised Statutes authorize the practice and modes in the United States courts to be conformed to the modes of procedure in the re8pective states wherein such courts are held, abd authorize thesll.meremedies byattachment as arc permitted by the statutes of said respective states; and whereas, by the act of March 8, 1887, when anonginal suit is brought in the circuit: court, and jurisdiction is founded only on the fact of diverse citizenship, such suit can be !brouE1;ht either in the district of the residence of the plaintiff or thedefendant,-the circuit court can obtain jurisdiction in'rt1'ri/, by attachment of the property of anon-resident defendant, which is situated within the district of' the plaintiff, without personal It. will be readily admitted that the United States courts, which are created. by statute, "can have no jurisdiction but such as the stb.tute confers," (SheldOn v. SiU,8 How. 441;) and that this doctrine has been asserted with. great earnestness by the sUpreme court. n is furthern'ldte evident that a state may sUbject property situated within its limits;· which is owned by non-resid,ents, to the payment of the demands' of its own citizens, and that, when' the bob-resident cannot be per80naUy served with process,the;statutes of the state may author.. ize a constructive service, whiehshall be sufficient· to Bubject the property to 8 proof;eding in Tem; b\1tsuoh proceedings 'must be authorized arid derive theit \talidity from the local statutes. Pennoyer v. Neff, 95 U. S. 714. 'Neither can it be denled that priort6 the 'enactment of sections 914 and 915 there was no statute of the United· States which gave authority toa circuit court, by original process, in anaction at law, to seize the propert)r of a non"residentdefendant, and subject it to the demands of '8 tesident plaintiff, 'i:Without personal service upon the defendant, and, in the case ofa corporation;upon such agents as may }Jroperly be deemed its tepresentatiVes, 6r the appearanee' of the defendant in the suit. , caSe of' Toland v; Sprague, 12 Pet. 300, the'followingpropositibn was announced;" which has ever sibce beenadhetetl to, (Curt. Jur. of U.S. Courta,105,) and in Ex parte Railway Co., lOSU.S. 794,was 'e'Vidently regarded as axiomatic: "(4) toattacb property, to compel the appearance of per80ns, can properly be used only in cases' in which such' persons are, amena-