Hobbie v. Jennison

This is an action at law brought in the circuit court of the United States for the eastern district of Michigan in August, 1886, by Isaac S. Hobbie and John A. Hobbie. The original defendants were Charles E. Jennison and Isaac H. Hill. The defendant Hill appeared, and then withdrew his appearance, and the suit was discontinued as to him, and proceeded as against Jennison. The action was brought for the infringement of letters patent of the United States, No. 45,201, granted to Arcalous Wyckoff, November 22, 1864, for an improvement in pipes for gas, water, etc., for 17 years from that day. The plaintiffs had become, from May 31, 1876, the owners of the patent for the states of Maine, New Hampshire, Vermont, Rhode Island, Massachusetts, Connecticut, New York, New Jersey, Pennsylvania, Delaware, Maryland, Virginia, and West Virginia, and the District of Columbia. The declaration alleges that Jennison, on June 12, 1880, and on divers days between that day and November 22, 1881, at Hartford, Conn., and elsewhere in the plaintiffs' territory, and without their license or consent, made and used, and vended to others to be used, the patented invention, and within those dates did ship from Bay City, Mich., to the Hartford Steam Company, of Hartford, Conn., large quantities of wooden pipe embodying the patented invention, with intent that the same should be laid and used at Hartford, and thus infringed the right of the plaintiffs under the patent, to their damage, $5,000.

The defendant joined issue, a trial by jury was duly waived, and the case was tried before Judge Brown, the district judge, now a member of this court. He found in favor of the defendant, and a judgment in his favor for costs was entered. The opinion of Judge Brown is reported in 40 Fed. Rep. 887. The circuit court found the following facts:

'(1) That during all the times hereinafter mentioned the plaintiffs in action were assignees and owners of letters patent No. 45,201, dated November 22, 1864, granted to Arcalous Wyckoff, for an improved pipe for gas, water, etc., for New York, New England, and all the eastern states north of the Carolinas, and carried on business as manufacturers of the patented pipe at Tonawanda, in the state of New York, with sufficient facilities to supply the market in all the territory owned by them, and that, at the time of the sale of the pipe or casings hereinafter mentioned, defendant's firm was aware of the plaintiffs' title to said patent for the state of Connecticut.

'(2) That the firm of Ayrault, Jennison & Co., which was composed of the defendant, Susan Hill, and one Miles Ayrault, was the assignee and owner of the same patent for the state of Michigan, and during the greater part of the year 1880 manufactured and sold the patented pipe at Bay City, in the state of Michigan, to various persons.

'(3) That in the year 1880 the firm of Andrew Harvey & Son did business in Detroit, Mich., as machinists and manufacturers of valve fittings and other supplies.

'(4) That in the fore part of 1880 the Hartford Steam Company, a corporation organized, existing, and doing business under the laws of the state of Connecticut, at Hartfore, in said state, undertook the project of laying down lines of steam-pipe apparatus for heating purposes in the streets of said Hartford, and that they had considerable correspondence with said Harvey & Son as to the best prices they could get for pipe castings and iron pipes, and also as to the best terms for freight from Bay City, Mich., and elsewhere, to Hartford, Conn.; that on the 5th day of May, 1880, said Hartford Steam Company, which had been negotiating for several weeks with Harvey & Son concerning the said project, completed a contract with them to lay down in Hartford the said steam-supply apparatus.

'(5) That said Harvey & Son entered upon the performance of said job at Hartford as the agents, and under the directions, of the said Hartford Company; that they were also employed and acted as the agents of said Hartford Steam Supply Company in obtaining for them the best prices they could in the purchase of iron and wooden pipes, and in obtaining the best rates they could for freight from Michigan or elsewhere, and in obtaining rebates in freight when necessary; and that said steam company relied upon their judgment in said matters; and that in all their negotiations and dealings with Ayrault, Jennison & Co. they acted on behalf of, and as the agents, merely, of, said Hartford Steam Company.

'(6) That after said Hartford Company had perfected said contract with said Harvey & Son, they sent various written orders, during the year 1880, by mail, to the address of said defendants, at Bay City, Mich., to ship to them at Hartford, Conn., certain quantities of wooden piping; that said defendants accepted the same, and manufactured said piping at their factory under said patents, and in conformity with the description, and covered by the claim, of said Wyckoff patent, and sold and delivered the same to the said Hartford Company on board the cars at Bay City, Mich., addressed to them, and that they had nothing to do with said piping after the delivery of the same on the cars at Bay City; that said Hartford Company paid the freight thereon from Bay City to Hartford, and sent drafts for the payment of said piping to defendants at Bay City; that none of the wooden pipes used in the laying of said steamsupply apparatus at Hartford were sold to said Harvey & Son, but were all sold to said Hartford Steam Company; and that any orders made by Harvey & Son were made merely as the agents of the Hartford Steam Company.

'(7) That said piping so purchased was laid down in Hartford during the term of said patent, and that, during the negotiations connected with the sales and shipment of said pipe or casing, defendant's firm knew that it was for use in the construction of steam-heating works in the city of Hartford, state of Connecticut, and that said Harvey & Son were to lay said pipe in Hartford.

'(8) That the accounts for said sales to said Hartford Company were kept on the books of said Ayrault, Jennison & Co. in the name of the Hartford Steam Company, and that a statement of the entire account from their books of said sales were sent to them at the close of the year.

'(9) That said pipe or casing was laid down as a part of said works during the life of said patent, in the summer and fall of 1880, under said Harvey's directions, in the streets of Hartford.

'(10) That by the acts and doings of defendant's firm in the premises, as above stated, the plaintiffs sustained damage, and, if any recovery were permissible under the rules of law, they would be entitled to an inquiry to ascertain the amount of such damage, based on the testimony introduced by said plaintiffs.'

As a conclusion of law from the foregoing facts, the court found that the plaintiffs were not entitled to recover in the action. The plaintiffs excepted to the conclusion of law, and to the judgment, and have brought a writ of error.

James A. Allen, for plaintiffs in error.

[Argument of Counsel from pages 358-360 intentionally omitted]

George H. Lothrop, for defendant in error.

Mr. Justice BLATCHFORD delivered the opinion of the court.