24 F. Cas. 466 | U.S. Circuit Court for the District of Southern New York | 1851
The hill fiied by the plaintiffs in the circuit court in Louisiana was founded upon the 16th section of the patent act of 1836 (5. Stat. 123), and its scope and aim were to obtain the benefit of the extraordinary powers granted by that act to circuit, courts. The section is as follows: “Whenever there shall be two interfering patents. or whenever a patent, on application, shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent previously granted, any person interested in any such patent, either by assignment or otherwise, in the one case, and any such applicant in the other case, may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties, and other due proceedings had, may adjudge and declare either the patents void in the whole or in part, or inoperative and‘invalid in any particular part or portion of the United States, according to the interest which the parties to such suit may possess in the patent or the invention patented, and may also adjudge that such applicant is entitled, according to the principles and provisions of this act, to have and receive a patent for his invention, as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall, in any such case, be made to appear: . . . provided, however, that no such judgment or adjudication shall affect the rights of any person, except the parties to the action and those deriving title from or under them subsequent to the rendition of such judgment.”
It is plain, from the bill referred to. that the plaintiffs claimed their equity to be the interference of Devall’s junior patent with their prior one. and the relief they sought was to have the posterior patent declare.! void. The court had jurisdiction of the subject-matter in equity for no other purpose. for, although the bill prayed an account of the profits received by Devall and his co-defendants for the use and manufacture of cotton-presses, and that such profits should be decreed to the plaintiffs for their damages, yet, manifestly, that prayer was but incidental to the one demanding judgment of nullity against DevalPs patent as one interfering with Tyler’s. The account is not required in aid of a suit at law, nor is an injunction prayed for: and. if it he competent to a party, by original bill in equity, to recover damages for the violation of a patent right, the bill is clearly not framed to that end, and contains nothing denoting such intent, other than the commonplace formula of a prayer “for such other and further relief as to justice and equity may seem meet.” This court cannot. intend that, under the bill presented to the circuit court in Louisiana, any other question was tried than the one designated by the statute — that is, which, if either, of the patents was void, in the whole or in part, or inoperative and invalid in any particular part or portion of the United States. Those particulars were placed within the cognizance of the court by the statute, and upon those the act authorized the court to adjudge and -decree.
We consider the parties in this action to be virtually within the proviso to the 16th section of the act of 1836 (the defendants having become assignees of and privies with the defendant in the suit in Louisiana, pendente lite), and that their rights would be bound by the decision in that suit, had that court pronounced judgment that the two patents interfered, and upon the validity or invalidity of either of the patents or . of any part of them.
In support of the plea of puis darrein continuance it is argued, that the court must presume that the judgment of the court in Louisiana was adverse to the validity of Tyler’s patent, because that question was involved in the issues raised in the cause, and that the judgment of the court upon all the issues was, in effect, that the plaintiffs had no valid tille to the invention claimed by them. This conclusion is, however, one of hypothesis and argument. It is not announced by the court, in rendering its judgment, nor, in our opinion, does that judgment exclude any other conclusion. The decree of the court upon the merits was, that the bill of complaint be dismissed with costs. This does not necessarily import that the patents interfered, or that Tyler's patent was adjudged void and inoperative. The plaintiffs in that suit may have failed to prove that the defendants violated their right, which would have been the case if Devall’s machine was essentially different from theirs in construction and operation: or the plaintiffs may have parted with their title, or executed grants or licenses under which the defendants were protected. The plea supplies this court with no means of ■ determining upon what description or character of merits, as between those parties, the decree dismissing the bill was founded: and, if any failure of evidence on the part of the plaintiffs, or any testimony on the part of the defendants within the issues, might have produced the result and justified the decree, this court cannot assume that the interference of the two patents. rather than any other one of such particulars, was the ground of the decision.
But, independently of the want of record proof that the circuit court in Louisiana heard and decided the case before it solely upon the question as to the interference of the two patents, and as to which was the valid one, we think that a judgment or decree cannot be accepted as determining that
Judgment must be rendered, on the demurrer. for the plaintiffs, with leave to the defendants to plead over, on the usual terms of payment of .costs.
[A motion made by plaintiffs to strike out a special plea by defendants, on the ground that it was a repetition of the plea puis darrein continuance, which was adjudged bad, was denied. Case No. 14,310.]
