29 App. D.C. 415 | D.C. | 1907
delivered the opinion of the Court:
Before proceeding to consider the first question in order, which is the effect of the decision in the first interference, that the appellant contends was a final determination of the matters involved in the second, a preliminary question must be disposed of.
Before an appeal can be taken from an appealable decision of the Commissioner of Patents to the court, notice and reasons of appeal must be filed in the Patent Office within forty days (exclusive of Sundays and legal holidays) from the date of the decision appealed from; and petition for appeal to this court, with a transcript of the record, must be filed within forty days (exclusive of Sundays and legal holidays) from the time of giving the notice of appeal before mentioned. Notice of this appeal was given January 7, 1907, and reasons of appeal filed therewith. The ninth reason is: “That the Assistant Commissioner erred in not awarding priority of invention as to counts 1, 2, 3, and 5 to Horine, and in awarding priority as to such counts to Wende.” On February 1, 1907, notice was served on Wende’s attorney of record, to the effect that under the ninth reason of appeal, aforesaid, appellant would ask a reversal of the decision on the ground that the decision in the former case was conclusive of the matters litigated in this interference. Pursuant to this notice of amendment the same was filed in the Patent Office on February 14, 1907, and made a part of the
Without considering the point whether this court will take notice of a fundamental error, apparent upon the record, that may not have been specially assigned in the reasons of appeal, — which is in the nature of the ordinary assignment of error in actions at law or in equity, — or whether the particular error is embraced within the ninth reason of appeal, as broadly written, we are of the opinion that the amendment of the reasons of appeal should be entertained. Neither the rules of this court nor of the Patent Office mention amendments to the reasons of appeal; but when made, in due time, to correct an assignment that may not be sufficiently specific, or some inadvertence in its preparation, and no possible injury could be done the opposing party,, we see no reason why it should not be permitted. No injury whatever can be done by entertaining the amendment in this case: The rpcord shows that the point was mainly relied on at each hearing in the Patent Office; it is made in the petition for appeal to this court; the opposing party was promptly notified, and admits that he has had ample time to meet the contention. The matter of consideration is one within the exercise of the discretion of this court.
The doctrine of res judicata, or estoppel by former judgment, is thus stated by Mr. Justice Harlan, delivering the opinion of the Supreme Court of the United States: “The general principle announced in numerous cases is that a right, question, or fact distinctly put in issue and directly determined by a court of competent jurisdiction, as a ground of recovery, cannot be disputed in a subsequent suit between the same parties or their privies; and even if the second suit is for a different cause of action, the right, question, or fact once so determined must, as between the same parties or their privies, be taken as conclusively established, so long as the judgment in the first suit remains unmodified. This general rule is demanded by the very objects for which civil courts have been established, which is to secure
In another case upon which the appellee strongly relies in denial of the estoppel in this case it was said: “It must appear, either upon the face of the record or be shown by extrinsic evidence, that the precise question was raised and determined in the former suit. If there be any uncertainty on this head in the record, — as, for example, if it appear that several distinct matters may have been litigated, upon one or more of which the judgment may have passed, without indicating which of them was thus litigated, and upon which the judgment was rendered, —the whole subject-matter of the action will be at large and open to a new contention, unless this uncertainty be removed by extrinsic evidence showing the precise point involved and determined.” Russell v. Place, 94 U. S. 606, 608, 24 L. ed. 214, 215. That was a suit for the infringement of a patent, and the question was the effect of a former judgment recovered by the complainant against the defendant in an action at law for the infringement of the same patent. The answer admitted the recovery of that judgment, but denied that the same issues were involved or determined therein. There was no extrinsic evidence relating to the issues that were determined, and the
The judgment or decree in the former case is not conclusive in the latter one as to matters which might have been decided^ but only to those which were in fact decided. Cromwell v. Sac County 94 U. S. 351, 353, 24 L. ed. 195, 198; Last Chance Min. Co. v. Tyler Min. Co. 157 U. S. 683, 687, 39 L. ed. 859, 861, 15 Sup. Ct. Rep. 733. The issue of the estoppel is that there has been a judicial determination of the fact; and this, includes every fact put in issue and necessary to the judgment, or decree, whether expressly recited therein or not.
To- determine, then, what has been adjudicated in the former1 litigation on which the claim of estoppel is founded, resort is had to the material facts alleged with certainty in the declara
The difficulty in the application of the principle, that so frequently occurs in ordinary litigation, is often increased by the peculiar character of the proceedings in the Patent Office. The proceedings are ex parte during the process of amendment,, under the suggestions of the Office, leading up to the allowance of the application; and it is only when the interference has been declared and the preliminary statements of the conflicting parties filed, that either has information of the proceedings of the other. The issue of the interference is prepared in the Patent Office. There are no formal pleadings. The applications which contain the descriptions of the invention, and the claims that relate to the matter of the issue, are the foundations of the case. The preliminary statements are required merely to give the respective dates of conception and reduction to practice of the invention described in the application, thereby fixing the boundaries of the evidence relied on for their establishment. To ascertain what facts have been finally adjudicated in an interference, resort must be had to the several applications, the preliminary statements, the claims in issue, the evidence produced, and the decisions of the tribunals of the Patent Office. These decisions, unlike the ordinary judgments of courts of law, are opinions reciting the grounds upon which the award of priority is made, consisting of conclusions in respect of matters both of law and fact.
The conditions recited are analogous to those presented in the recent case of Blackford v. Wilder, 28 App. D. C. 535, in which it was held that the decision in the first interference between the same parties was conclusive of matters litigated in the second. There are some differences between the two cases, it is true, but they do not materially affect the application of the governing principle. In Blackford v. Wilder somewhat broader claims had been narrowed, pursuant to the requirements of the Office, in order to obtain allowance of patentability at all. After final award of priority to Blackford, by judgment of this court reversing the decision of the Commissioner, Wilder was permitted to amend his claims. His amendment broadened the former claims by omitting a specific feature of the issue of the former interference. This, if finally allowed, would have enabled him to obtain a patent dominating that to which Black-ford had become entitled by reason of the final judgment before rendered in his favor. On the amended claims another interference was declared between him and Blackford. Wilder’s application had been drawn upon a construction called Exhibit E, on which he had chiefly relied in the former interference as evidence of his completion of the invention of the issue therein. He was permitted in the second case to introduce evidence to- show that this exhibit had in it the necessary lighting member when produced in the first case. Of the construction of this exhibit there was no doubt, but the existence of the lighting member was one of the questions expressly decided against him. His amended claims broadened the invention into a claim for a burner omit
It was also said in Blackford v. Wilder, supra, that the principle to be applied is the same declared in the case of two patents issued to the same party, where, to be valid, the second, if it covered matters described in the first, must' be for something essentially distinct and separable from the invention covered by the first. Miller v. Eagle Mfg. Co. 151 U. S. 186, 198, 38 L. ed. 121, 127, 14 Sup. Ct. Rep. 310.
In the case at bar the amended claims were first presented by and patented to Ilorine, and subsequently adopted by Wende; but it is not perceived that this makes any substantial difference between the two cases. The question nevertheless remains: What was determined in the first interference ? It is unfortunate, perhaps, that the Patent Office practice permits amendment by the successful party to broaden the scope of his claims after a final decision in an interference upon claims for the same invention narrower in scope. That question, however, is not before us.
Assuming, for the purposes of this case, without so deciding this time, that Wende would not be precluded, by the decision in the first interference, from making a new claim for a generic invention, separate and distinct from a mere specific form (when not estopped by the conditions stated in Bechman v. Wood, 15 App. D. C. 484, and cases therein cited), we will inquire whether there is such a distinction between his new claims and those involved in the issue of the first interference.
The invention described is of a manifolding copying book, the binged support of which, used in connection with the record book and adapted to fold over so that one or- more copy slips may receive the impression, and be withdrawn for delivery to the buyer and seller, is the essential feature, as shown by its recurrence in the counts of each issue. That Wende considered
The hinged support connected with the record book and ■adapted to fold over for the making and removal of copy slips is clearly the controlling feature of the combination in both issues, and the only reason for holding in the first case that ■exhibits 1, 2, and 6 did not embody the issue is on the specific ground, as stated by the Examiners-in-Chief in their decision, “that they do not have these secondary and tertiary leaves ■secured to the hinged support or carried by such support.” It is the omission of these secondary and tertiary leaves that served, in their opinion, to distinguish the one issue from the other.
Wende may have been right in his view that exhibits 1, 2,
In our opinion, these broadened claims do not present the case of a generic invention separable and distinct from the matters covered by the former issue. As admitted in the decision of the Commissioner before quoted, in which he declared that the exhibits did not show a necessary feature of the first issue, they and the invention in issue “have certain features in common.” He declined, however, to give them what ho called “a'strained construction,” that would-bring them within-that issue. As before suggested, he may have been in error in refusing this construction. Be that as it may, however, the most that we are able to say of the amended claims now is that they differ from those of the adjudicated issue in scope merely. We are constrained to hold that this brings them under the rule as applied in Blackford v. Wilder, supra, and the Patent Office and other decisions recited therein with approval.
As this conclusion necessarily disposes of the appeal, there is no occasion to consider any other question in.the case.
Por the reasons given, the decision appealed from will be reversed; and it is so ordered. The clerk will certify this decision to the Commissioner of Patents. Reversed.