In re Curtiss, 46 App. D.C. 183

In re Curtiss

46 App. D.C. 183 | D.C. Cir. | 1917

Mr. Justice Van Orsdel

delivered the opinion of the Court:

It will bo observed that the claim here made is totally different from the issue involved in the interference. It is not an attempt to broaden the scope of the former claim, as in Blackford v. Wilder, 28 App. D. C. 585, and other cases cited by the tribunals below and by counsel for the government. The real test here is whether or not the granting of these claims to Curtiss would dominate the subject-matter upon which Janin prevailed in the interference. If so, the claims should be denied. Re Marconi, 38 App. D. C. 266. The claim in the interference, however, relating solely to a, hydro-aeroplane capable of rising from and alighting upon the water by its own power, was awarded to Janin as the prior inventor, and is in no respect dominated by the present claims, relating solely to a device capable of traveling 'upon the water at high speed. If Curtiss should be found to he entitled to priority of the claims in issue, it would in no respect affect the prior rights of Janin acquired through the former interference. True, an attempt, was made by Curtiss in the former case to claim both the flying and skimming features in the count of the issue, hut we held, in the light of his specification and his attempted reduction to practice, that he should he limited strictly to a hydro-aeroplane; and this was the only question adjudicated.

The rule of res judicata or estoppel by judgment was announced in Nesbit v. Independent Dist. 144 U. S. 610, 618, 36 L. ed. 562, 565, 12 Sup. Ct. Rep. 746, as follows: “When the second suit is upon the same cause of action and between the same parties as the first, the judgment in the former is conclusive in the latter as to every question which was or might have4>oen presented and determined in the first action; hut when the second suit is upon a different cause of action, though between the same parties, the judgment in the former action operates as an estoppel only as to the point or question actually litigated and determined, and not as to other matters which might have been litigated and determined.” The same mile has been applied by this court to adjudications made by the tribunals of the Patent *190Office. Indeed, rule 127 of the rules of practice of the Patent Office expressly forbids the declaration of a second interference “upon a new application for the same invention filed by either party.”

In Blackford v. Wilder, supra, the court stated the rule in sweeping terms when applying’ it to the facts before it, as follows: “To sum up: The parties are the same. The applications are the same, and disclose the invention of each issue. The constructions relied on, respectively, as evidencing conception and reduction to practice of the invention of both issues are the same. The fundamental facts of both cases are the same. Applying the well-settled principle of estoppel by judgment, before stated, it follows inevitably that the final decision in the first interference is conclusive, unless it can be made to appear that the question upon which the determination of the second case rests is one that neither was, nor could have been, presented and determined in the first case.”

But these broad rules apply only where not only the cause of action is the same, but where the claim or demand in controversy is the same. The distinction is well stated in Cromwell v. Sac County, 94 U. S. 351, 24 L. ed. 195, where the action was upon four county bonds and four coupons thereto attached. Estoppel was claimed by a judgment in favor of the county in a prior action upon earlier maturing coupons attached to the same bonds between the same parties in interest. The court, speaking through Mr. Justice Field, said: “In considering the operation of this judgment, it should be borne in mind, as stated by counsel, that there is a difference between the effect of a judgment as a bar or estoppel against the prosecution of a second action upon the same claim or demand, and its effect as an estoppel in another action between the same parties upon a different claim or cause of action. In the former case, the judgment, if rendered upon the merits, constitutes an absolute bar to a subsequent action. It is a finality as to the claim or demand in controversy, concluding parties and those in privity with them, not only as to every matter which was offered and received to sustain or defeat' the claim or demand, but as to any other ad*191missible matter which might have been offered for that purpose. * * * The language, therefore, which is so often used, that a judgment estops not only as to every ground of recovery or defense actually presented in the action, but-also as to every ground which might have been presented, is strictly accurate, when applied to the demand or claim in controversy. Such demand or claim, having passed into judgment, cannot again be brought into litigation between the parties in proceedings at law upon any ground whatever. But where the second action between the same parties is upon a different claim or demand, the judgment in the prior action operates as an estoppel only as to those matters in issue or points controverted upon the determination of which the finding or verdict was rendered. In all cases, therefore, where it is sought to apply the estoppel of a judgment rendered upon one canse of action to matters arising in a suit upon a different cause of action, the inquiry must always he as to the point or question actually litigated and determined in the original action, not what might have been thus litigated and determined. Only upon such matters is the judgment conclusive in another action.”

There are compelling reasons why the rule of estoppel by judgment should not be applied with the same severity in interference proceedings in the .Patent Office as in cases at law and in equity. In the latter instances the issues are made up by the parties themselves, with wide latitude for amendment to meet unexpected contingencies arising in the course of trial. In interferences the issues are made up by the proper official in the Patent Office, and the case is confined to the issues thus found. True, they are, made from the applications of the respective parties, which, in a sense, constitute the pleadings in the ease; but the issue, nevertheless, is the result of the view taken by the official of the case presented by the applications, and is conclusive on the parties.

Unlike a suit at law or in equity, the parties are limited in an interference to the specific issue or issues found by the Patent Office. The broad rule that all questions are res jvdicaia which were, or might have been, determined in the former case must *192be applied with reference to the limitations of the particular proceeding. It may often occur within the broad scope of a proceeding at law or in equity that matters which might have been determined,.and which constitute estoppel in a second action, would have no application in an interference proceeding. In the former proceeding the whole purpose of the litigation may be examined to ascertain the issues which might have been determined in a prior suit, but in the latter the investigation is limited to the specific issue or issues pointed out by the Patent Office, as embraced within the interference. It follows, therefore, that only the matters that might have been presented relative to the particular thing or issue determined in the former interference can constitute estoppel in a second proceeding between the same parties relating to the same subject-matter.

This brings us to the narrow issue of the interference and the claims of the present divisional application. Do they present a single cause of action ? We think not. In the interference, the sole issue upon which the case was decided was whether or not the claim called for a device capable of rising from and alighting upon the water. That was the only “point or question actually litigated and determined” in that action. The present claims relate solely to a device capable of traveling at high speed upon the water, without regard to its ability to rise from or alight upon the water. That question was not determined in the former case. Indeed, we held that it could not be under the count there in issue. The claims of the present issue were found to be patentable over the prior art, but were rejected solely upon the grounds herein Stated. Though relating to the same structure, the specific claim found to have been made in the former case was for a different invention than that here involved ; and, the cause of action being different, we are of opinion that appellant is not estopped to make the claims of the present issue.

The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed.