MILLER L'. LIGGETT &: MEYJ)RS TOBACCO CO·
and others v.
(Circuit Court, E. D. Mis8Quri.
A party who contributes money.for the purpose of 'employing sel,apd carrying on a litigation, under a contract with a pal1r:"to, record, has the right to take such action in the case as willpFotoo1 t his interests' in such litigation.' ' " :, '",.
The validity of a patenthavi'ng been in patt sustained in one oircuit, suit was brought in another circuit, for infriJlgement by' a, PArty who had contributed to the payment of the cOUllSel who had defended the first suit, Held, that tbe defendant 'ras 'estopped by the cation in t11e other circuif,butthat the court would not enter any decree based upon that opinion, until the conclusion·of.the litigation in such other circuit.
4. PRAcTICE PmOR USE. : ,\ Evidence of prior use having been introduced iJ;l suit, held, that the proper way to proceed would be by motion for a rehearing in the oUier citcuit.-fED. ·. ' I
In Equity. A suit having been brought agamst ForM &. Co., tobacco manufacturer, at Louisville, for infringing the Miller ,& Worley patent, re-issue No. 8060, for "finishing said patent having two claims-one for the process and one for the product-these defendants,with somedozim other tobacco manufacturers, issued a oircular to their customers proJ:Qising to protect them ag/tinst any suit Miller & Worley might bring against them for dealing in the tobacco. It further appeared that the above defendants contributed to the payment of counsel wh6 defended the Foree case, l,ut in all other respects were entirely independent of, and had no connection whatever with, Foree & Co. The evidence showed also that their was in many essentials different from that prac.ticed ,by ,Foree & Co. The product claim was held void. Much new evidence, as antici-
pating the process, was introduced in this case by both and .he case set down, for final hearing. Stem <t Peck, Beattie d Winchester, l'l.nd George Harding, for complainants. Samuel S. Boyd, for defendant. McORARY, C. J. We have, copsiderecl tJle 'case of Miller v. The Liggett cf; Myers Tobacco Co. so. far' as the question of estoppel is concerned. The suit is brought to determine the -validity of certain letters patent belonging to these plaintiffs. TheisaI;tie qriastion was inv6lved in the case of Miller v. Foree, in the district of in which there was a decree sustaining the validity of the patent in so far as the first claim i!l c()ncerned,anq,Jj,!l the patentee has waived anything beyond that· claim, that:decree sustains the claim of the validity of tHe (latent; far as it is involved in this litigation.. The Liggett & Myers Tobacco Company was not a party to the record in that case, and the qnestion is whether it was privy to that proceeding, in such a sense' as to be bound by it and estopped by the decree. The rule upon the subjeU of estoppel is, of cOrlrse, well understood by counsel. is,"to state it generally, th,l:tt pat:ties an;d privies concluded by the judgment. But I am of the opinion that a person, to be concluded by a judgment, must be privy to' the proceeding' in such a' sense tha1;:he may control the litigation in iio fall' as making motion's dn the case, offering evidence, cross-e;x.ltmining ol"taking an appeal is concerned; that is, it is not l'eaMnable to say that a man shall be bound by an adjudication, unless he has all the ordinary rights of a litigant with respect to thE! adjudication. The question, therefore, is whether 'it appears, from the proof before us in this case, that the Liggett & Myers Tobacco Company had the authority to control that litigation, within the sense of the rule as I have explained it, and also whether they have now the right to go into that court, and, if the time is not out, 'move for a rehearing, or for an appeal, if there has been a final decree, and, if there has not been a final decree, whether they have the right, when one is rendered, to appear there a.nd take an appeal. I think that a
MILLER V. LIGGETT
MEYERS TOBACCO CO.
party who contributes the pur)?qse of employing counsel, and carrying on alitig!1tion, under a party to the record, must of necessity .be, held to have the inJhe case aswill it. As, for suppose there3s a' case,which is to 1)e a test case, involving the validity of) patent,or anything else, against particular individual,btit Involving a subject-matter concerning which a large of . 9ther persons are equally with the' in all interested, ora numb!3r of them, come together, enter'intoa that'they will to carry that tht they will unite for of employi:pg combine to carry it on in the name of the party to, it seems to me that the persons who, under such a'cbntract J as .that, actulj.lly contribute money for the purpose of carryip'-g on a 8uit, authorized to go into that court ali9, the llame of the party to the record in making such taking such steps as are necessary for the. protection of interest in it. . IJ;L other, >v0rds, I StlP.P9se .theagreement appears in this Boyd, the in thatsujt, can IJ... ill that court and !fPove, fOf a and. in name of his defendant in that cas,e and take The language of the circular, which wa's signed by these defen,dants, with others, is ,that counsel have been "attend to all such suits ;"that is, all suits involVi:ng thevalid,ity of this ,patent. ' The testimonY"shows that't4e iJl· (', .. :', defet;tdants in this q!tse have, inpursu,ance ()f this very agreement, contributed money to carryon 'that case Kentucky. It may be, howev'er, that the court in Kentucky might take a different view questioI). from what we do. WecaIlllot decide for tha,t court, and, of courSe, the decision of that court would be conclusive and final upon the parties. If the counsel for these defendants should appear in that court and should move for leave to appeal, and if that court should deny them that right, they mIght 'be without remedy if were 'now, upon this question, t?fi.nally adjudicate this case; con-
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we ought"to stand dOyket \vithout 'anyiinaladjildic'aWm until you that litigation in Kentucky. Yott carctake 't1it1:t'case to th,e supreme conrt, and when the'supie:me court decided these questionsthat will be all There is no necessity, as we thhik; 'for expeHment., 'wfthall eorth judges in the country 'when you hiLVe one case which can be taken to the supl;eme court, and tHe law of .Ih order, hQwto prote'ct the rights of the defendants as fully as we propose ' make no, decree' in, this .elise' at'l .· " .' to , ',' . , . I, , . " hutto continue it until we know what has been the result'of and:if it goes to the supreine court, until you have ari adjudication by that court. If we t6aecide the <itiestion now; we would say that these are clearly 'estdpped upon the evidence that is before us; but,a.s it is possible there might be a different decision in the 'court of Kentlicky, we do not propose 'to render any decree upon that case based lipon the opinion' which we hold.' We do propose, hdwever,tosay to counsel here that they must go on with that case in' Kentucky, bring it to a final decree, take it' t9 the 'supreme- court, and have the law of the 6asefinally settled' by that unless theyare estopped froth doing so by some decisiOn there; and will take no further steps lmtil you Kaye done so. ' ,Mr. BOYD. If your honor will pardon me, in regard to the cohrse which your honor suggests there is one practical <lifficulty, which may render it impossible for us to get our rights 'there/ and that is this: Your honor very well knows that in fuotions for rehearing it is necessary that the parties illi6uld show and satisfy the court that as soon ,as the evi. dence came to their notice it was brought there by a motion did not for rehearing. Now, as a matter of fact, this to the knowledge of any party until after that decree wlis 'bqt, as honor will see, since this fLnswer was set u,p nearly a year's time has elapsed. My object in bringing1t'tip in t,his way, ,and not making a motion there, wa1 it would be fairer to the other side, that,
MILLER V. L,tG'WTT , "' "" '..
MEYERS TOBACCO 00.
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instead of going before that court on ex parte affidavits for a rehearing, we might giving them the of cross-examination, and that they might have the like nght to new matler:.c,)\Therefore, if it should Jum yut Judge, ,',thisjime' aQd, whi<lh I: noW' present; 'should not be held'byr'him to' introdtlce this" ant;l 'tIlat eitB,el"were to think is: vital, and as to'rwhieh th:eieJWas nohWeU)8 hint· 011' BUggMUOb! intihelrecord"a-siWno\V s*nds belote' J'udde Bait i: " ',:I,', "''''', . ,', ,':We erty after you have settled thatc:laseto act on nothilng in that -:1 ,say that 'inthecaseroron.'every question, 'is! as ment, and that you have fairly and fully stand, in the case decided by B,a:iKter.. .', J , Mr. BOYD. Not as qf to th!3 extent; TRE;AT.;; It to use, it .is, ,a is p\lIYAe\Y, patent ,f ." ',. / /,j,; stillwe d<? not like to upon. as,;aiJ;l<1e that Jr,e; fO\lU4 we if a prior IllotIon for rehea.ring there, as your: honor d :',Judge will be the,
No'rE.. See Unuea Statu tl:Frireign'Felting (Jo. v. Asbestos Felting fu:r.,!l13. ; ,I
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,['(Oi'!'iJ'UiHlourt, 8..' D· .JIe1O Y01W.. ,;AprlI-118;18S1.)'
1.1 f&nq;rElMPT OIr
,,:' <4. 'Party 'having been adfUdged guiltfof 'erifuinal dilhteinpt in the in 8 patent suitj't6 FED. REp. issue for the the fine imposed,held,if the defendant desired to suspep.p. execu:tici&' the wlirrarit' untii' decree couldrie iUld appeal ';;', ,takeJili to; the .supreme COllrt, should giVe i B ! bond, (wIth' iritre1 , tln,e,yrpen,eYJ1r tlJe coui1lf sbouM.-mcatle the suspension, and that a reasonable time Jbf'i .. tq ,give such bond after the warran,t issued; duringwli,i9h time the . i; ;eialoJ.11ioti'oUaid' watrallt'wouldbe s'uspMaed.' .J '. ' . ' , '
'bF PROCElls'." ' ,F.ormi of WOlless for :carrying'iJl1to ,effect the provisioii of the order
mitt'ed till the fine bepai4, prescribed by the court.-pjfu.
, Edmund W.etmo're,fb'r plaintiff.; : iJniis 'H: .Whitelegge; fot' , BfJATcHFonJ;rC;J.ltJ. 'this suit'this' c6rtrl decided, (6 F})JD.'REP: 63;) !''that tpeJpr6visions Mthe oidet'df Mar6h'13; I-SSO, 'shotiM 'be 'carried iuto .. :, That i, '1:' : order directed that the sh9'U1d:pa,y- mto court $1,3B9:99'a;s a 'fine 'for the coritenl'pt refert(jd'to the br'der, with'in;a' spe'ci£ed titUe, and tihti; if not' pai'd,thedefe:ridant shOuld stand committe'd till'it 'should and that [When paid 'it shbuldbe paid ovJr to the plaintiff in te;imbutse 1 ment. The'dontempt consisti3d'intheuse, in VIolation of' a. injunction :i8'stted 'in this cause, of a machine which the court held to be an infringement of the patent,the vi,olation of which was ..fQrbiddenby said injunction. The amount of the fine was the amount found by the court to be the expenses of the plaintiff for counsel fees and otherwise in prosecuting the contempt proceeding. In this decision a:order was made by the court on the second of February, 1881, ordering that the terms of the orders filed herein February 17, 1880, and 1fal'ch 13, 1880, be carried into effect,
·'!ri f E4uny."'"