HOE 11. KNAP.
The complainants insist that the device covered by this claim is found in the defendants' machine; that is, that defendants' machine shows the sheet-conducting mechanism by which the sheets are successively carried forward for delivery, and automatic switches that direct the alternate sheets into separate channels. Several grounds of defense are interposed by the defendants, but, from the view which I take of this patent, I do not deem it necessary to consider them at all. The first defense is that this claim of the reissued patent is void, because it is not found in the original patent, but is an enlarged and different claim from any found in that patent. It is contended by the complainants that the claim now under consideration is substantially the same as the second claim of the original patent. This old second claim reads as follows: "(2) Separating the sheets by mechanism, substantialIy as described. so that they would be delivered in files, sUbstantially as set forth and specified." 30, 1871, as reissue No. 4,400, and This patent was reissued in that reissue the second claim was stated as follows: "(2) Separating or changing the direction of printed sheets of paper, so that they may be automatically piled in two or more piles, or in more than one pile. by mechanism constructed and operating SUbstantially as described." The apparent object of this reissue was to correct, so far as this claim was concerned, 11 clerical error in using the word "files" instead of "piles." It will be seen that in the second claim of both the original and the first reissue the claim is for something more than changing the direction of the printed sheets of paper; but they must be changed so that they may be automatically piled in two or more piles, which provision necessarily required the claim to include the flies or other devices for piling the sheets at the ends of the machine. By the reissue now under consideration. which was made July 15. 1879, the whole idea of piling, or any other purpose in which the flies or any other device is used, is left out, and the claim covers simply a sheEt-conducting mechanism in combination with automatically moving switches that operate to separate alternate sheets, and direct them into separate conveying channels. The proof shows that this patent was applied for in June, ] 864, at which time folding devices in connection with fast printing-presses were little used, if known; but the printed sheets were delivered from the flies to be folded by hand. In the progress of the improvements upon printing mechanism these folding devices became an essential attachment to all fast-operating presses, and the evident purpose of the reissue of 1879 was to make this first claim cover any device by which the sheets were directed by automatic switches into different channels, whether for the purpose of being deliveored to flies or to be carried to the folding mechanism. At all events, it seems very clear to me that this reissue is an enlargement of the original claim, and even of the second reissue, because I think there can be no doubt that the second claim of the original and .thst reissue included the flies or piling I am therefore
of opinion that this reissue is void, under the rules of'the supreme court in Miller v. Bridgeport BrassCo., 104 U. S. 350; Mahn v. Har· wood, 112 U. S. 354; S. C. 5 Sup. Ct. Rep. 174; Wollensak v. Reiher, 22 Fed. Rep. 651. It may, also, I think, 00 well doubted whether this patent is not void for want of novelty. The proof shows, and the claim in question in fact admits, that automatically moved switches, for the purpose of directing sheets into different channels, were old at the date of this patent; and that a switch organized and arranged to change the di· rection of the sheets of paper alternately as they came from the printing-press into different channels could not be made the subject of a patent in combination with those channels, except where some specific result or purpose was obtained thereby. The switch might operate to drop the sheets in different piles as they fell from the press, or tbrow them into shutes, or even into different channels, but unless it did something more than merely throw them into different channels for the purpose of being conveyed away or delivered at different points, it would hardly seem to be a patentable arrangement, in view of the state of the art. I therefore conclude that the defendants infringe the sixth claim of the Crowell patent, as alleged in the bill, and that they do not infringe the Hoe patent, No. 211,848; and that the first claim of the Hoe & Tucker reissue No. 8,801 is void. The proof on the application for a preliminary injunction was to the effect that the complainant, the owner of this patent, had never used it, and never constructed a printing-press with the Crowell device. The argument is that the owner of this patent was a very large manu· facturer of printing-presses; that they did not manufacture and keep printing-presses in stock, but only make them to order; and that they have received no order as yet to make a press containing the Crowell device. The question, therefore, arises whether the court will grant an injunction in favor of the owner of a patent who has not, after a reasonable time, put it into use, against another who is using it. I think, under a patent which gives a patentee a monopoly, he is bound either to use the patent himself or allow others to use it on reasonable or equitable terms, and as I refused an injunction on the motion before the hearing, I shall refuse an injunction in the interlocutory decree, and allow the defendants to continue to use the patent on their giving bond as they have heretofore. A decree may be prepared accordingly.
ITEAM-GAUGE .. LANTERN CO.
(Circuit Oourt, E. D. Mis8ouri. March 29,1886.)
PATENTS FOR INVENTIONS-INFRINGEMENT-ESTOPPEIr-JUDGHENTII.
Where, in a suit for the of a patent, the bill is dismissed be· cause of failure to show any infnngement, the decree dismissing the bill will not estop the plaintiff, or his assigns, from again suing the same defendant for infringing the same patent.
In order to make a judgment available as a technical estoppel in a case, it must appear by the record of the prior suit that the particular controvH8y sought to be concluded was necessarily tried and determined.
In Equity. Plea in bar. Hough, Overall &: Judson and E. S. Jenny, for complainant. Edward J. O'Brien, for defendant.
BREWER, J., (orally.) In the cases of Steam-gauge &: Lantern 00. v. Meyrose there are pleas of a former adjudication. The pleas set out that in 1880, in an action between the assignors of these plaintiffs and this defendant, a decree was entered dismissing the bill on the merits, and it is contended that that is an adjudication and estoppel against these bills. The complainants allege in this bill their patent, and that the defendants at this time and since that decree have been making lanterns which are an infringement upon their patent. How far can that decree on the merits, dismissing the bill, estop these complainants? The estoppel must be certain. In the case of Russell v. Place, 94 U. S. 606, Mr. Justice FIELD closes his opinion in these words: "According to Coke an estoppel must be certain to the very intent, and if, upoQ. the face of a record, anything is left to conjecture as to what is necessarily involved and decided, there is no estoppel in it when pleaded, and nothing conclusive in it when offered as evidence. " The same doctrine is affirmed by a multitude of courts, quotations from whose opinions are found in the brief of the plaintiff. I give a few of them: In Hooker v. Hubbard, 102 Mass. 245, is this language:
"The court are of opinion that upon the facts here presented the learned jUdge erred in extending the doctrine of estoppel by former jUdgment to the decree stated. Estoppels of this description are attended with qualifications which must be strictly observed. They are conclusive only as to facts which were directly put in issue and determined in the former suit. If the pleadings present several distinct propositions of fact, the jUdgment is not conclusive upon anyone of them, unless it appears from the record or aliunde that the issu!' upon which it was rendered was upon that proposition."
The same doctrine was laid down by the supreme court in Packet ,Go. v. Sickles, 5 Wall. 580, the court, by Mr. Justice NELSON, saying:
by Benj. F. Rex, Esq., of the St. Louis bar.
"When a judgment is used in pleading as a technical estoppel, or Is relied on by way of evidence as conclusive per se, it must appear by the record ot the prior suit that the particular controversy sought to be concluded was necessarily tried and determined. * * * But even when it appears from the intrinsic evidence that the matter was properly within the issue controverted in the former suit, if it be not shown that the verdict and judgment necessarily involved its consideration and determination, it will not be concluded."
Also, in BurZen v. Shannon, 99 Mass. 203 : "It is lawful to reason back from ajudgment to the basis on which it 8tands. upon the obvious principle that where a conclusion is indisputable, and could are equally indiso' have been drawn only from certain premises, the putable with the conclusion, but 8uch an inference must be inevitable, or it cannot be drawn. These we understand to be limitations of the rule. according to aU well considered authorities, ancient and modern." Now, what was necessarily involved and decided in that former decree? The bill in that case alleged the patent, that the defendants were making lanterns, and that those lanterns were an infringement on the patent. There was a general decree dismissing the bill upon its merits. Was it necessarily involved and decided that the putent was void? Might not the decision have been that the defendants were making no lantel'Ds? Would not the decree necessarily have been dismissing the bill upon the merits, if there had simply been a failure to prove that the defendants were making lanterns? Now, if it ill uncertain upon the face of the record as to what was in fact settled and decided, how can it be said that the decree bars this suit? Of course, the extent to which a judgment or decree is certain varies very much, whether it is for the plaintiff or the defendant. Were I to bring an action for trespass, averring title and possession of a piece of real estate, and a trespass on it by the defendant, and obtain judgment, it would be necessarily involved and decided therein that I had the title and possession; for otherwise I could not have obtained such a judgment. But on the other hand, if the judgment were in favor of the defendant, it would not be necessarily involved and decided therein that I had no title, because the decision might have been upon the ground that no trespass was proven. The famous case' of Outram v. Morewood, 3 East, 346, in which Lord ELLENBOROUGH wrote an elaborate opinion, illustrates this. There a party sued in trespass, averring title to a mine, and trespass by defendant, and obtained judgment. In a subsequent action Lord ELLENBOROUGH held that the title to the mine was necessarily involved and decided, and therefore it was an adjudication. But if the judgment had been in favor of the defendant., it might have been either on the ground that plaintiff had no title to the mine or that there had been no trespass. 'rhere is practical good sense in that. Take the case that I put of a suit in trespass. It would be a terrible outcome if, after judgment in one case in favor of the defend-
STEAM-GUAGE & LANTERN CO. V. MEYROSE.
ant, it should be held that title and possession were adjudicated against me, and that I could never thereafter maintain any action of trespass against him, no matter what subsequent trespasses he might commit. The supreme court of the United States in two cases in 94 U. S., -one of Russell v. Place and the other of Oromwell v. Oounty oJ Sac, -have, in elaborate opinions, discussed this question, and laid down the rule as bas been stated. The case of Oromwell v. Oounty of Sac was this: A party brought suit upon coupons, averring that the bonds were valid; that he was a bona fide holder. .J udgment went against him. He subsequently sued upon the bonds of the same series, and coupons taken from the same bonds as the coupons in the prior suit, averring that he was the bOM fide holder, and that the issue was valid, and the supreme court, with one dissenting voice, affirmed that the prior judgment was no bar. So, in the case of v. Place, 94 U. S. 606, a party in an action at law for damages for infringement of a patent recovered. Afterwards, he brought a suit in equity on the same patent, and the court held that the former judgment was not an adjudication, and did not estop the defendant in the equity suit for an injunction and accounting, because the validity of the patent was not necessarily involved in the prior case, except in respect to the claim which was the basis of recovery. There were two claims in the patent. A patent might be valid as to one claim and invalid as to the other. The sum and substance of it is tbat an estoppel must be certain to the very intent, so that if, upon the face of the record, anything is left to the conjecture as to what was necessarily involved and decided, there is no estoppel in it when pleaded, and nothing conclusive in it when offered as evidence. Further, if we are to look beyond the face of tbe decree in this case, and gather wbat light we can from the opinion that was expressed upon the demul'rer to a bill of review of the former decree relied on, we find, from the language of my brother TREAT, who decided that case, that the decision was upon the ground that tbe parties had failed to prove that the defendant made any lanterns. He says plaintiffs offered no proofs, and had none taken, tending to show any infringement by the defendants, and hence the court was bound to dismiss the bill. "It was not necessary for it," says tbe court, "to inquire into the validity of the plaintiff's patent, because if such patents were valid, no evidence that tbe defendants had infringed them was offered." It is true, he says, if he had gone into tbe question of tbe validity of the patent be would possibly have decided the same way, but that was not the basis of the decision. We are tberefere oonstrained to hold that the pleas are not good. Pleas overruled, and defendants ordered to answer by May rules.
(Olrcuit (Jourt, E. D. Missouri. March 24, 1886.) The fact that the purchaser of a patented machine has been sued as an Infringer by third parties, and put to expense in making defenses, is no defense to a suit by the vendor on the contract of sale, even where that contract provides indemnity bonds shall be given the vendee, and none have been furnished.
At Law. Suit for damages for breach of contract. Motion to strike out part of answer. The allegations of the answer as to the guaranty, and contract to give an indemnity bond, referred to in the opinion of the court, are as follows:
"I<'urther answering herein, this defendant says that, in and by the terms of said contract sued un in this action, it is provided and stipulated that the plaintiff herein should personally guaranty the validity of the patents under which said machine was made, and that he would furnish to this defendant indemnity bonds to aave him harmless in the event of any litigation from the use of said Exceh;ior Electric Light plant, which plaintiff 'I< * agreed to furnish to chis defendant under the terms of said contract; and this defendant says that plaintiff herein 'I< 'I< has Wholly failed ... ... ... to furnish to this defendant any indemnity bond or bonds."
The other material facts are sufficiently stated in the opinion of the court. George D. Reynolds, for plaintiff. D./jer, Lee & Ellis, for defendant.
BREWER, J., (orally.) In the case of Horne against Hoyle there is a motion to strike out parts of the answer. The petition alleges a contract to place an electric plant in a building in this city, the performance of the contract, non-payment of part of the purchase money, and an assignment of the contract to the plaintiff. The answer in one defense avers that it was a part of the contract that the contractor should furnish an indemnifying bond, guarantying against all infringements, and that that bond was not given. Of course that states a perfect defense. It further alleges that since the putting of the plant in the building two suits have been commenced for infringement, and are pending, and that the defendant has been put to the expense of employing counsel to defend those suits. The motion is to strike out this last defense. Obviously, it should be sustained. If no bond was given, there is a perfect defense. If there was no stipulation for a bond, then it is immaterial whether defendant has been sued or not. If a bond was given, the remedy of the defendant is on that bond. Non constat, that neither the contractor nor the
IReported by Benj. F. Rex, Esq., of the St. Louis bar.