236 F. 768 | E.D. Pa. | 1916
This case and applied rulings may be thus formulated:
No one, of course, would be heard to assert that the determination of one case under its facts precludes another defendant from asserting his rights under a different state of facts. When, however, we are outside the domain of facts, and the law of a case has been once determined and settled, that law is no law unless it is of universal application, and the principles of its application are thereafter followed in all cases. The general doctrine of stare decisis is applicable in a peculiar sense to patent cases in which the validity of • a patent, which has been once adjudged, is brought again in question. To gain an appellate effect by the bringing of a second action in the mere guise of a new action through the simple expedient of introducing a second infringer is an effort which ought not to be countenanced. This is so obvious that the principle is self-supporting, and is, of course, frankly accepted by counsel for defendant.
The clearness and force with which this defense is presented calls for a word more. If claim 5 is invalid, it must be disclaimed, or the rights conferred by the letters patent are annulled. If invalid, no rights can be asserted until the disclaimer is made. If in the case of Whitaker v. Todd the invalidity of claim 5 was determined, plaintiff could not be permitted to rely upon the ruling of that case in part, and reject it in part. A patentee is not, however, obliged to accept any ruling not a final one of invalidity, and is not required to disclaim until there is such a finding. The decree .in Whitaker v. Todd was supported by the finding of the validity of claims 1 and 3. It was not necessary to pass upon 5 or 8. Technically there was no finding as to claim 5, except in the dismissal of the bill. This did not necessarily involve a finding of invalidity. There was, therefore, no legal consequence, except the dismissal of that bill, and no legal necessity for plaintiff to appeal, as long as the findings on claims 1 and 3 would support the decree made. If the present bill was based upon claim 5, there would be no adjudication to support the motion for an injunction. As it is, that claim is not .involved, and we do not know, except as a matter of opinion, whether it is valid or not.
The question with which we are concerned is the narrow one of whether infringement so far appears as to justify the court in stopping the defendant pendente lite. The pinch of the argument (which from the deserved high reputation of counsel may be assumed to present the real pinch of the case) seems to come on the method of securing registration. The essential of such registration is one at the time of contact. In the Todd machine this was assured by keeping the parts in fitting position each with the other throughout the operation. In the'Whitaker machine this idea of being always in the desired mating position was departed from, and the expedient resorted to of bringing the parts into proper position at the important moment through the operation of a cam.
We are not now required to find what the construction of the machine of the present defendant is; but it is sufficient for present purposes to find, as we do, that such infringement appears from the proofs as now submitted as to justify protecting the plaintiff until the facts may be fully developed and found. This brings us to the practical question of how this protection may be afforded. It may be done through an injunction. Some measure of it, at least, may be afforded by refusing or vacating the injunction upon defendant filing a counter bond. The latter may prove to be practically inadequate, and the result is best reached by allowing the writ upon bond being filed, with the allowance of a stay if an appeal is taken upon bond in like amount being entered for a supersedeas. Rond to be in $5,000.