163 F. 914 | U.S. Circuit Court for the District of Eastern Wisconsin | 1908
(after stating the facts as above). The defendant, having duly excepted to the order allowing the amendment of the bill of complaint, renews its contention that the legal effect of such amendment was to bring in an additional party, and that the defendant is entitled to a dismissal of the bill.
It is further argued that the suit abated when the Delaware corporation was dissolved, and that the Delaware corporation never was possessed of this cause of action, as the event has proven. This contention is, of course, predicated upon the theory that the Delaware corporation was in the first instance the actual complainant, in which event the position of the counsel would be sound. The doctrine is familiar that a complainant may not, under the guise of an amendment, abandon the entire case made by his bill and present a'new and different case. The case of Shields v. Barrow, 17 How. 144, 15 D-Ed. 158, is perhaps the leading case, and great reliance is placed upon it by defendant’s counsel. We are content with the rule as there laid down:
“Amendments can only be allowed when tlie bill is found defective in proper parties, in Its prayer for relief, or In the omission or mistake of some fact or circumstance connected with the substance of the ease but not forming the substance itself; or for putting in issue new matter to meet the allegations of the answer.”
In my opinion the amendment did not change the cause of action, but within the rule above stated simply corrected “a mistake of fact connected with the substance of the case,” and that it did not work a substitution of parties. That it was a pure mistake or inadvertence must be evident, because, first, the Delaware corporation did not then own tlie patent; second, the infringement alleged was not available in a suit by the Delaware corporation. It is not conceivable that it was intended tc name the Delaware corporation the complainant under such a state of facts. Furthermore, it was the Massachusetts corporation that actually brought the suit. It retained Mr. Quinby for that purpose, and instructed him to sue in its behalf. This Mr. Quinby undertook to do, but, being unfamiliar with dates and facts with which he had to deal, a copy of the bill in the former suit brought by the Delaware corporation against Kibbe Bros. Company on the same patent was furnished as a guide and source of information. In framing the bill he carelessly followed the allegations of the former bill, as to citizenship, designating complainant as organized under the laws of Delaware. The mistake was not discovered by Mr. Page, who verified the bill, or by the attorneys on either side, until the proofs of title disclosed the error. The Massachusetts corporation is here by its correct name, and no change in that regard was necessary; but the place of its existence was erroneously set out. It has often been held
Indeed, such an amendment was made in Shields v. Barrow, supra. In the original bill the defendant, Robert Shields, was described as a citizen of Rouisiana. By an amendment he was described as a citizen of Mississippi. Such amendment was passed over without criticism by the court. In Needham v. Washburn, Eed. Cas. No. 10,082, suit was brought for an infringement of a patent against the defendants as co-partners; but the proof showed that the defendants and others had been organized as a corporation of the same name or designation as the firm. Mr Justice Clifford, who presided, disregarded the mistake, and proceeded to hear the case on the merits, because, as he suggested, the bill might be cured by amendment. In Foster’s work on Federal Practice, § 163, it is laid down that in a suit brought in the federal court an amendment may be allowed setting forth the facts that are essential to federal jurisdiction. It is apparent that the amendment has worked no prejudice to the defendant. It has wrought no change in the nature or scope of the defense. It was simply effectuating the intention of the parties, and in my judgment was within the legitimate exercise of judicial discretion. The Tremolo Patent, 23 Wall. 518, 527, 23 R. Ed. 97. By leave of court both parties amended their pleadings and proceeded to complete the proofs. Mr. Foster, in his work on Federal Practice, § 168, says:
“When both parties have conducted the case as if the pleadings contained certain allegations therein omitted, an amendment inserting such allegations may be made at almost any stage of the case.”
Under these circumstances, it would be extremely technical to require the complainant to go out of court, and institute a new suit. For these reasons the contention of defendant is overruled.
This brings us to the consideration of the estoppel which is set up against the defendant. As to the proposition of law involved, the case is ruled by Eagle Mfg. Co. v. Moline Plow Co. (C. C.) 50 Fed. 195, and the same case in the Circuit Court of Appeals of this Circuit (57 Fed. 992, 6 C. C. A. 673). The comprehensive and lucid opinion pronounced by Judge Jenkins in that case must be accepted as a statement of the law which is final and conclusive here. It would, therefore, be idle to discuss the numerous authorities cited from other circuits.
The only question remaining, then, is whether the proofs here submitted bring the case within the rule. The point is made by the defendant that the estoppel is not available to the present complainant because it purchased the patent before the former adjudication was made, and therefore it cannot be held to be privy within the meaning of the law. The point is not well taken. The date upon which the proposition must turn is the commencement of the suit against Kibbe Bros. Company, and not the date of the adjudication therein. Carroll v. Goldschmidt, 83 Fed. 508, 27 C. C. A. 566. The case upon which the defendant predicates its contention is Ingersoll v. Jewitt, 16 Blatchf. 378, Fed. Cas. No. 7,039. A loose expression in the opin
“That no one Is privy to a judgment whose succession to the rights of property thereby affected occurred previously to the institution of the suit.”
The distinction here raised was unimportant in the Blatchford Case, because there the licensee acquired title eight months before the commencement of »the suit out of which the alleged estoppel arose. It is probable that the agreement of the first Racine corporation with Kibbe Bros. Company to maintain the suit at its own expense was also binding upon the present defendant, its business successor. However that may be, the adoption by the defendant of the policy of its predecessor as to the Kibbe suit, the payment by it of the taxed cost and fees of counsel, with full knowledge of the facts, are in and of themselves sufficient to establish privity as matter of law. Rumford Chemical Works v. Hygienic Chemical Co. (C. C. A.) 159 Fed. 436.
The defendant contends, however, that certain of the issues were not contested in the Kibbe Bros.’ suit, and that as to such issues the decree is not conclusive; citing Cromwell v. County of Sac, 94 U. S. 353, 24 F. Ed. 195. It is unnecessary to open up again the discussion as to the true interpretation of this famous opinion because the evidence shows that Mr. Elliott appeared at the hearing for defendant and cross-examined the witnesses. He also filed a printed brief on the final hearing, which is in evidence here, wherein he says:
“Defendant offered no evidence in defense, believing that complainant had failed to prove the infringement alleged in the bill of complaint.”
He thereupon discussed the evidence and cited many authorities, claiming that the defendant was entitled to a decree dismissing the bill. This amounts to a contest, although no affirmative proof was elicited. The concluding paragraph of judge Jenkins’ opinion in the case above cited would seem to dispose of this proposition. “The decree of the court is not the less conclusive because a party has failed to produce all the evidence at command, or because of newly discovered evidence.”
The only ground for asserting a difference in the issues in the two cases is that all the claims of the patent were involved in the Kibbe suit, while here only four of the seven claims are in issue. Certainly, as to the claims common to both suits, the estoppel must prevail.
Eor these reasons I am constrained to hold that the defendant is estopped and precluded from raising the issues which it so elaborately presented, as to the validity of the claims of this patent, and as to infringement; and that the complainant is entitled to a decree for an accounting in accordance with the prayer of its bill, with costs. The patent having expired, no injunction can issue in the case. It is so ordered.