40 F. 305 | U.S. Circuit Court for the District of Eastern Michigan | 1889
A preliminary objection in the nature of a plea of res ad-judícala is taken by the defendant against the issue of this injunction. Prior to the opinion of this court in the case of Roller-Mill Co. v. Coombs, 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;
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 this class of cases, we should have waived our own views, and deferred to it; so far, at least, as it covered the issues involved in that case. It seems, however, that the reason for dismissing the bill in the Wisconsin case was not then known, and no stress was laid upon it in the argument of the Coombs Case. Having expressed our .own opinion of the patent in that case, it is now too late to claim that, as matter of comity, we ought to follow the Wisconsin case. It is equally clear that it does not create a-case of estoppel. Not only is no record produced showing upon what ground the bill was dismissed, but neither the plaintiff nor defendant in this suit were parties to that. A decree declaring the invalidity of the patent is in no sense a proceeding in rem, and does not prevent the same or a different plaintiff from prosecuting a suit against another defendant, and establishing its validity upon different, or even upon the same, evidence. This precise thing was done in Ingersoll v. Jewett, 16 Blatchf. 378, which was also a bill in equity for the infringement of a patent. In defense, it was argued that the plaintiff had previously filed a bill against different parties for an infringement of the same patent, the defense of which had been assumed by one Topham, under whom the defendants in that suit, as well as the defendants in the suit under consideration, were licensees. It was held by Judge Wallace that, assuming that Topham was a party to the former suit, the defendants could not avail themselves of the decree in his favor upon the ground that there was a want of mutuality in the estoppel. The same ruling was made by Mr. Justice Blatchford in respect to the same decree in Stamping Co. v. Jewett, 18 Blatchf. 469, 7 Fed. Rep. 869. The facts of the present case are much more conclusive against the estoppel, as neither of the parties to this suit were parties or privies to the case of Allis v. Freeman.
2. In the case of Roller-Mill Co. v. Coombs, 39 Fed. Rep. 25, we had occasion to consider the Gray patent in issue in this case, and came to the following conclusions:
(1) That it had not been anticipated by the Lake Nemelka patent, or by any other of the devices offered in evidence, and that the second, third, fourth, and fifth claims were valid.
(2) That the patentee was not debarred from the benefit of the doctrine of mechanical equivalents by the fact that his original claims for a combination of a vertical and horizontal adjustment by any method had been rejected by the patent-office, and he had accepted restricted claims in their place.
(3) That the Mawhood machine, containing, as it did, all the elements of the patentee’s combination, though differently arranged and located, and with a lever of a different order, was an infringement of the Gray patent.
To accomplish these results, the patentee makes use of — First. Two rolls, one of which is fixed, and the other adjustable. His specification also seems to contemplate that both rolls may be made adjustable, but in what manner 'is not stated. Indeed, it is difficult to see how this could be done without taking away from the combined devices applied to the other 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 aredevic.es for the grinding adjustment, and a spring urging tho 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 defendant’s machine both 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 stop and holding device. There is no lover or swinging arm, but the journals of both rolls rest upon horizontal shafts, one of which may be raised and lowered for the vertical adjustment, and the other of which slides forward and hack, carrying the second roll 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 defendant’s rolls corresponds about as nearly with it as the one attached to the other. If we were to attempt- to locate it, we should have to say that it was divided into two separate parts, by one of which the vertical adjustment is accomplished; while in plaintiff’s patent this adjustment is made by means of a swinging arm, and not by means of the rod. This rod, and the upright swinging arm, we regard as of the essence of the plaintiff’s patent. Should defendant’s device be adjudged an infringement, we
No opinion filed.