147 F. 741 | U.S. Circuit Court for the District of Western Pennsylvania | 1906
This is a suit for the infringement of a patent for a metal weather window strip, issued to A. C. Sims April 1, 1890. The bill was filed September 36, 1904, and answer having been promptly made, contesting the validity of the patent and denying that it had been infringed, the case was duly put at issue, upon which proofs have been fully made. It appears, however, that at the time suit was brought there was pending in
It is not disputed but that, by intervening and contesting the former case as they did, the defendants became privies to the result, and it is admitted that the issues are the same, except,as other alleged anticipating, devices have been introduced, assailing anew the validity of the patent. But the point is made that at the time the present bill was filed, and issue joined, the other suit was merely in an interlocutory stage, and the decree by which the patent was sustained and an account directed was thus persuasive only; (Rumford Chemical Works v. Hecker, 2 Ban. & A. 351, Fed. Cas. No. 12,133; Harmon v. Struthers [C. C] 48 Fed. 260), requiring the suit in hand to be prosecuted independently to the end. This fails, however, to distinguish between the effect to be given to the case at that stage of it and at the one to which it subsequently attained. Having been brought to final judgment, and the matters which are here litigated having been examined and passed upon, it has now been immutably determined, by the decision of the court where it was pending, that, contrary to the contention of the defendants, the patent is valid, and that the weather strip which they manufacture and vend infringes upon it. It is difficult to see how anything could be more conclusive than this, or what use ' there is in the doctrine of res judicata, if it is not to so prevail here. Suppose the decision had been the other way; is there any question that the defendants by a cross-bill, in the nature of a plea puis darrein continuance at law (1 Dan. Chanc. Prac. 607), could have brought it in and had effect given to it? And, as estoppels must be mutual, why, then, may not the plaintiffs do the same thing, by supplemental bill, now that it is the other way? Or suppose, after a final decree in favor of the plaintiffs, either here or there, the defendants were found to be infringing in another district; would not a bill lie there, based solely on such decree, and would not the defendants be bound? And yet what difference is there in principle from what we have here, the decree in the Maryland- case having been brought in by
Authorities upon the subject are not wanting, which present the exact situation and confirm the. conclusion so reached. Thus, in David Bradley Mfg. Co. v. Eagle Mfg. Co., 57 Fed. 980, 6 C. C. A. 661, it was held that a decree in a prior suit for the infringement of a patent is none the less conclusive because it was merely interlocutory at the beginning of a second one, in which it is set up as a bar after having ripened into a final decree. So, in Penfield v. Potts, 126 Fed. 475, 61 C. C. A. 371, the fact that a decree which constituted an adjudication as between the parties to a second suit did not become final until after an interlocutory decree had been entered was declared not to affect it as a liar when presented before final decree therein. And in Duffy v. Lytle, 5 Watts (Pa.) 120, and Casebeer v. Mowry, 55 Pa. 119, 93 Am. Dec. 766, it was said that a prior judgment upon the same cause of action sustains the plea of a former recovery, although tin; judgment (conversely to what we have here) is in an action commenced subsequently to the one in which it is pleaded. “The date is of no consequence,” says Thompson, J. “It is the fact of an adjudication upon the same subject-matter, and between the same parties, which gives effect” to it.
It is said, however, that new references have been introduced, and that there are thus new issues. But issues and evidence are not to be confounded. The issues are not changed, whatever be the evidence to sustain them; the question of the validity of the patent and the infringing character of the defendants’ device being the only ones involved in cither suit. A new™ attack is made upon the patent by the introduction in evidence of other alleged anticipations; but the issue, notwithstanding this, remains the same. These references, moreover, existed and were equally available to the defendants, then as now; and it is established beyond question that, where a party has been once finally heard, he is concluded, not only as to the defenses which were made, but also as to all that might have been. Cromwell v. Sac Co., 94 U. S. 351, 24 L. Ed. 195; Sacks v. Kupferle (C. C.) 127 Fed. 569. As is said in Gordon v. Ware Nat. Bank, 132 Fed. 444, 65 C. C. A. 580, a prior judgment on the merits between the same parties is conclusive. whether right or wrong, and as well as to everything which might have been considered, as actually was. Et was accordingly held in Empire State Nail Co. v. American Solid Leather Button Co., 74 Fed. 864, 21 C. C. A. 152. that a decree formally declaring the validity of a patent sued on, although that was not the issue directly made, is conclusive in a subsequent suit between the same parties and their privies, with regard to a similar infringing device.
But it is further said, that there was nothing to prevent the plaintiffs from rclitigating the questions at issue, and that, having brought the present bill without waiting for a final decree, and thereby chosen to treat them as still open, putting the defendants to the expense oE a contest on the merits, they arc not in a position to foreclose the matter, as they now seek to do. But there was nothing which required the plaintiffs to defer bringing suit, which would have left the de
Let a decree to that effect be drawn in favor of the plaintiffs, with costs.
Specially assigned.
