| E.D.N.Y | Feb 18, 1913
The complainant filed a bill in equity on the 14th day of July, 1911, against the Transit Development Company and the Nassau Electric Railroad Company, which had previously been defendants in actions at law brought by the Cheatham Electric Switching Device Company, as plaintiff.
. These actions at law were instituted upon the 4th day of January, 1910, and charged infringement (by 8 switching devices in the case, of the Transit Development Company, and by 6 of the 8 in the case of the Nassau Electric Railroad Company) of two patents, Nos. 612,702 and 917,541, taken out by one Robert V. Cheatham. The American Automatic Switch Company has been removed from this case as party defendant by plea, and we have therefore the same parties as in the action at law. The patents sued on and the claims alleged to be infringed are the same. The devices alleged to infringe are exactly similar, and are of the sort identified in the evidence as “type 14.”
The particular devices involved in the present action include the 8 devices proven in. the actions at law, and 27 others, the existence and location of which were not discovered until after the actions at law had been instituted, but many of which were known at the time of trial and were specified in an exhibit used in that action. The bill in the present action, as amended, attempted to bring in the American 'Automatic Switch Company, and also asked for an accounting of all profits from the use of the devices recited, for a writ of injunction against further infringement, and for’ the delivery and destruction of the infringing devices. As has been said, the American Automatic Switch Company has been removed from the action, and an accounting as to the 8 devices in, the previous suits has been had, in the sense that the court instructed the jury that the sum of $68.93 represented, for each device, the profit of the user and the damage of the patentee. This amount was arrived at from the testimony of Mr. Cheatham as to the fixed market price for his device, and the expense of manufacturing and installation. Upon the trial of the present action, the complainant put in evidence the record in the action at law, so as to show that, as between the parties, the question of validity of the patents and infringement had been adjudicated. Substantially no other proof was offered.
The defendants have objected- to the introduction of this record, have denied the validity of the patents and infringement, and have offered testimony to support their contention, upon the theory that the issue is not res adjudicata as to them. With respect, therefore, to the 8 devices covered by the judgment in the suit at law, the only difference between the action at law, up to the time of judgment, and the present action, would be that in the action at law a separate cause of action might have been numbered in the complaint for each one of the 8 devices, while in the present action a single cause of action
Aside from the question of surprise, there would seem to be no difficulty in including in the proof in such an action any acts from which damage flowed up to the time of trial, and, if that had been done, then the scope of an action in equity would be still further limited. But the principle upon which the case is decided seems to be one of public policy, merely disapproving of allowing two actions to stand with respect to a set of transactions covering the same period. And there would seem to be no more reason why causes of action, discovered subsequently to the institution of the first action, should not be included in the second (on the theory upon which a new trial may be asked upon newly discovered evidence) than there would be why all causes of action up to the time of trial should be disposed of in the first litigation. At the outset, therefore, the court is unwilling to hold that the complainant may not maintain the present action with respect to the 27 devices which were not mentioned in the first suit.
As to the other 8 devices, and even as to the 27 above referred to, the complainant relies upon the case of Tilghman v. Proctor, 125 U.S. 136" court="SCOTUS" date_filed="1888-03-19" href="https://app.midpage.ai/document/tilghman-v-proctor-92181?utm_source=webapp" opinion_id="92181">125 U. S. 136, 8 Sup. Ct. 894, 31 L. Ed. 664" court="SCOTUS" date_filed="1888-03-19" href="https://app.midpage.ai/document/tilghman-v-proctor-92181?utm_source=webapp" opinion_id="92181">31 L. Ed. 664, in asking for an accounting of profits rather than a decree for a recovery of the specific amounts found as the measure of damage in the action at law. It would seem that the complainant, if it be entitled to any recovery, is entitled to an injunction with respect to all the devices referred to, and that, if necessary, an accounting may be ordered as to any item1 not covered by the former judgment. Whether the rule of damage found in the action at law can be shown to be inadequate, and whether any method of computation of the profits (from a single switch point in an intricate railroad system, or the saving of a switch tender, or the time of the motorman who would have to open the switch by hand) can be worked out, need not concern us at the present time. That is a matter for the special master if an accounting be ordered. The principal question and the only one as to which much difficulty is experienced is that of