980
FEDERAL REPORTER,
vol 57.
statements of prQperty which section 3629 requires him to exact from each person. This section mentions by general description tb,ekind of property the statement must show, and concludes with the compr,ehensive direction that it must also show "all other facts required by the state board of equalization or by the assessor." Other sections of the Code also give directions as to property and the manner of its assessment, and a blank form of assessment roll is given. It is not contended by complainant that his form is a ''book,'' in the common acceptation of the term, or that it has any literary merit. His only claim is that he has put the requirements of the Code, which is claimed to be common material, in a convenient form, by "skill, labor, ap.d knowledge," to quote his language. 'rhat the form is convenient may be admitted, but whether more convenient than any other form which may be made in'cQnformity to the not stated, Ilor is it apparent how much skill and legal kllowledge were required or exerted other than what were necessary to read and understand the Code. But surely these are nQ.t so rare that they, deserve to be encouraged and rewarded by a monopoly. Hut tb,e materials are not common. The law requires the board blank form, and, if one convenient of supel;visors' to form can qe copyrighted and monopolized by the complainant, other forms can be copyrighted and monopolized by others, and the board of supervisors of the counties of the state will be in. the altOn,u)ous position of being unable to. perfol'In their legal duth's This is not an extreme statement of complainant's claim. The dl'gree of merit of the copyrighted matter the law is not concerned with. Any is legally enough. To use it or not use it is voluntary on the part ,of the public. But the supervisors must furnish fOl'IDS.. It' is their duty, and it seems to me it cannot be embarrassed by distinctions nice or broad of convenience of forms pl'eparel1 by private persons. I do not think authors will such a copyright. be encolJ)'aged The demurrer is therefore sustained. DAVID BRADLEY MANUF'G CO" v. EAGI.E MANUF'G CO. (Circuit Court of Appeals, Seventh Circuit. October 6, 1893.) No. 22. 1. JUDGMENT-RES JUDICATA-PATENTS FOR INVENTIONS.
Where a suit for infringement of a patent is brought against a firm that is a of the comp31)y thatill31)ufacmres the infringing device, and such company conducts the defense, raising the question of. validity of the patent; a decree for complainant is conclusive as to the validity of the patent as against the cOPlpany conducting the defense, even in regard to alleged anticipations not .referred to in the SUit, since under the issues all anticipatory inventions might hAve been shown in defense. 50 Fed. Rep. 193, affirmed.
2.
SAME.
Such decree is none the less conclusive !:>ecause it was merely interlocutory at the. bringing of the suit in wbieh it is set up as a bar, and subsequently ripened into a final decree.
DAVID BRADLEY MANUF'G CO. fl. EAGLE HANUF'G CO.
981
8.
SAMll:-PLEAIHNG AND PROOF.
such interlocutory decree In the first suit was alleged in the second bill, a final decree in the first suit, rendered pending the second suit, may be shown in evidence therein without supplemental pleading, where defendant took no exceptions to the bIll, consented to the Introduction of the final decree in evidence 80 far as the same was material, and only objected thereto on the ground that In rendering such decree the court erred through failure to understand the operation of an alleged anticipatory Invention. Taking testimony In the second suit as to the validIty of the patent Is not a waiver of the bar of the final decree in the former suit where such testimony was taken before said final decree was rendered, since until rendition of the final decree the proceedings in the first suit were no bar. '
4. SAME-WAIVER.
5.
SAME-DECREE ON STIPULATION.
In a suit to restrain infringement of a patent and to obtain an accounting, an interlocutory decree was rendered, granting a temporaxy injunction, and afterwards a' final decree, making the injunction perpetual, and awarding only nominal damages, was rendered upon a stipulation which provided that such decree should not be a bar to the recovery of substantial damages In a subsequent suit. Held,that the decree was conclusive as to the validity of the patent, the stIpulation only affecting its force as an adjudication on the subject of damages.
Appeal from the Circuit Court of the United States for the Northern District of illinois. In Equity. Bill by the Eagle Manufacturing Company against the David Bradley Manufacturing Company to enjoin infringement of a patent. Complainant obtained a decree. 50 Fed. Rep. 193. Defendant appeals. Affirmed. Statement by JENKINS, District Judge: The appellee, on the 11th day of June, 1888, filed Its bIll in the court below to restrain the alleged infringement by the present appellant of letters patent of the United States No. 242,497, dated the 7th day of June, 1881, issued to Edgar A.' Wright for improvements in cultivators. The bill, besides the usual averments in such suits, charged that on December, 1887, the complainant {the present appellee) "commenced suit by bill In chancerY against David Bradley & Co. in the circuit court of the United States for the southern distrIct of Iowa to restrain the said David Bradley & Co. from infringing the aforesaid letters patent; that the said David Bradley & Co. Is and was a branch house of the David Bradley Manufacturing Company, the defendant herein, and was engaged in selling the identical cultivators manufactured by the defendant herein; that the defendant herein undertook and managed the defe·nSe of s'aid suit against its branch house, employing counsel for that purpose, and conducting the defense, but it conuucted the defense in the name of the said branch house, the defendant named of record; that the defendant herein, an· swering said bill in the name of the said branch house, denied the validity of said letters patent; and any infringement thereof, to which answer a replication was filed by your orator, and thereupon your orator and the defendant proceeded to take and took their respective proofs, and, the same having been taken, the said cause was heard on final hearing at the May term of said court at Des Moines, A. D. 1888. And the said court, having considered the proofs and the arguments of coonsel, did adjudge and decree that the said David Bradley & Co. had infringed the said letters patent, and did enjoin the aforesaid David Bradley & Co. from further infringement thereof, which said decree remains in full force and unreversed; all of which proceedings and things will more fully appeal' by a certified copy of the records of said court, which your orator Is ready at any time to produce in court,as may be directed; and your orator attaches hereto a certified copy of said decree, marked 'Exhibit Co' And your orator further shows that the .cultivators sold by the said David Bradley & Co. were made by the de-
98! .;1·. \ . ·
FEDERAL BEPOBTEB, '.' .;.
.1....
..· ,
I
1endant herein under letters patent of the United States No. 243,123, to O. 'Ii. Hague, dlltfld June 21, 1881, and No. 270,629,"tti T B.O. Bradley, Ja,nual'7 16; 1883, wliichsaid patenuwere issuedw'the1l't1rlJt & Bradley M8Jlufacturing(lomp8JlY as assignee of said Hague and Bradley, and passed to the detend8Jlt herein, the. successor of the satd Funt & Bradley M8Jlutacturing Company. The said OOltivittors as made by'thedefimdant are correctly shown. by the drawings in the eaid letters patent to sliM .B.O. Bradley." The deoree referred to in tile bill as "Exblbit 0"" as 'follows: "Thiscause came on to be finally heard upon the ploodings Il1td proofs, and was argued by counsel for the respective parties, and, the pleadingsaJid proofs having been duly considered, it is hereby, this 2M day of May, 1888, ordered, adjudged, viz;: The. letters patent referred to in complain8Jlt's patent of the United States, granted unto Edgar A. Wright, bill, for lmproyel,ll9nts in c1Jltlvators, No. 242,497, 8Jld dated June 7, 1881, is a. good and valid patent; and that the said Edgar A. Wright was the first 8Jld original inventor ot the improvements therein described and claimed; 8Jld that the satdcollJplainant had at the c.:lml11encemer.t .of this cause a good 8Jld legal titie to said letter, patent No. 242,497, as averred in complainant's bill; 8Jld that the said defendant has intrillgEd the said pa,tent, and upon the exclusive (l()mplninant under the same, asclalmed in the first tour claim& rigbt" of said And it is further. ordered, adjudged, and decreed that the defendant ultIned, its agents, operatives, and workmen, each and .9n\.' of them, 00, .and they are, perpetuallY enjoined and restrained from elth!'\' directly or indirectly making, using, or selling to others to be usetl. l'ultivators constrocted 8Jld operated in the manner 8Jld upon the in said letters patent of the United States No. 242,497. And it is further ordered, adjudged, and decreed that the complain8Jlt recover of the defE'J.ldant .the profits which it has received or made Qr which have aoorner} to or sale of the improvements described and secured by said letj:ers.patent at any and all times since June 7, 1881, and also the damhas sustained thereby. And as it does not appear ages which to the"court what said profits 8Jld damages are, it is further ordered, adjudged, and decreed that this cause referred to George F. Henry, Esq., a muster of this court, to take and report to the court an account of the profits which the defePdant has received, or which have arisen or accrued to it from the use or sale of said improvements, and to ascertain and report the damages which the compl!!lnant has sustained. thereby since June 7, 1881, from the papers and evidence ,in the cause, 8Jld from 8Jly evidence which either party may produce before blIn of the same; and when he shall have taken 8Jl account of sald profits and assessed said damages he shall return the same to this court for further action In the premises. And it Is further ordered, adjudged, and decreed that the complalnant on such accounting has the right to cause. an examination ot the agents, 8Jld employes of the defendant ore tenus or otherwise, and also the production before said master at such time as said master may order-of the books, vouchers, and documents of the defendant, and that the of said defend8Jlt attend before .sald master from time to time within .thJ,:.!', district as said. master shall direct And it is further ordered that the question of increase of damages, and all other questions, be reserved until the coming in of the master's report. And it is ordel;'ed that the parties and master may apply on the foot of this decree for suob other 8Jld further order ofinstruotion as may be And it is further ordered, adjudged, and decre¢ that the complaina,nt recover of the defend8Jlt the costs ot this suit to be taxed." The 8Jlswer of the defend8Jlt (the present appellant) contains the following admlssionsrespecting such charges: "Fourth. This defendant, further answering, admits that a suit was commenced by the Eagle. Manufacturing Company, the complainant herein, against David Bradley & Co. in the circuit court of the United States for the. southern district of Iowa, substantially as in said bill alleged. They admit that said David Bradley & Co. was and is a separate corporation, and in part a branch house or agency of this defend8Jlt, and was engaged in with other much1nery, cultivators m8JlUfactured by this defendant. They admit that saId suit was to a certain extent defended by this .admit that pleadings were filed, and proofs
DAVID BRADLEY
CO. fl. :EAGLE MANUF'G CO.
983
taken, as set forth in said bill. Fifth. This defendant, further answering, admits that said last-named suit was heard at the time and place alleged in said bill, and that a decree was rendered adjudging that said David Bradley & Co. had infringed the said letters patent No. 243,497, and that the said David Bradley & Co. was enjoined from further infringement thereof; but this defendant avers that in said cause the finding of the oourt was against the defendant, largely, if not wholly, by reason of the said oourt not understanding the operation of the machine shown in one of the patents set up as anticipating the supposed invention of complainant's patent, to wit, the Dalton patent of 1869; and this defendant has reason to believe, and does believe, that if the court had fully understood the machine of said patent, the finding and decree would have been different. Sixth. This defendant, further answering, admits that the cultivators sold by the said David Bradley & Co. were made by this defendant under and in accordance with letters patent of the United States No. 243,123, dated June 21, 1881, to C. A. Hague, and No. 270,629, dated January 16, 1883, to B. C. Bradley." There was given in evidence in this suit the following admission by the defendant: "In the suit pending in the circuit court of the United States for the southern district of Iowa, wherein the Eagle Manufaoturing Company is oomplainant, and David Bradley & Co. defendant, and which suit was brought to restrain the infringement of the letters patent in suit herein, the defendant in this cause, the David Bradley Manufacturing Company, employed counsel, took charge of and conducled the defense of said suit In the name of the said· Bradley & Co., and paid the expenses thereof. This was done by the defendant herein, the same as it would be done by it for any agent, branch house, or customer engaged in selling implements purchased of the defendants, if sued for infringement of a patent on account of selling such goods." It also appeared in evidence that In the suit in the circuit court of the United States for the southern district of Iowa against David Bradley & Co., the master, to whom the cause was referred to and report the complainant's damages, on or before October 15, 1889, reported to the court as follows: "That the complainant has already brought suit against the manufacturer of the cultivators which were sold by the defendant, electing to recover in full of saill manufacturer all profits and damages arising from the sales by the defendant herein as well as other profits and damages, and fO!.' that reason will offer no proof of profit!! and damages in the cause. Accordingly the master reports that the complainant is entitled to recover the sum of one cent nominal damages and costs." This report was made pursuant to tbe following stipulation of the parties: "It is hereby mutually agreed by and between the Eagle ManUfacturing Company and the David Bradley Manufacturing Company, on this 25th day of September, 1889, as follows, to wit: That said Eagle Manufacturing Co. may cause the master in the case of Eagle Manufacturing Co. v. David Bradley & Company, pending at Des Moines, Iowa, in the United States circuit court for the southern district of Iowa, to return to the court the annexed report; and the action of the court thereon shall not be claimed by said David Bradley Manufactming Co. to be a bar to the recovery by the Eagle ManufactUling Company of the said David Bradley Manufacturing Company of all daIDages and profits, if any, arising from the sale of the cultivators by the said David Bradley & Co. in violation of the letters patent 242,497, to E. A. Wright, and by him assigued to the Eagle Manufacturing Co." On the 23d day of October, 1889,' the following written stipulation was signed and filed in the cause: "The follOWing proofs were offered in evidence in said cause this 23d day of October, 1889: The complainant appeared by Nathlmiel French, its solicitor, and the defendant, though not appearing, consented in writing to the introduction of said proofs, in so far as the same are material; and thereupon the complainant offered in evidence the final decree of the circuit court of the United States for the southern district of Iowa in the case of Eagle Mfg. Co. 'V. David Bradley & Co., which same is marked 'Complainant's Exhibit Bradley Final Decree;' and thereupon the complainant offered in evidence 8 stipulation entered into by defendant in regard to the testimony' of E. A. Wright, A. K. Raft, G. W. French and E. P. Lynch, taken in the CRSr- of Eagle Mfg. Co. v. Miller, pending in the circuit
984
TEPERAL
-
,
57.
court of the United States for the southern district of Iowa, together with · copy of said depositions and the exhibits therein referred to. ',I'he complaInant also otrered in evidence the admission of the defendant that it conducted tha defense in'the said suit o( Eagle Mfg. Co. v. David Bradley & Co., and also a copy of letters patent No, 226,833, to B. C. Bradley, dated April 27, 1880; and therupon the complainant announced that its case was closed. The defendant hl!rein hereby consents to the foregoing proceedings." Under such stipulation the complainant oft'ered and read in evidence the final decree of the circuit court of the United States for the southern district of Iowa 1:n the case referred to, as follows: "This case coming on for hearing on October 15, 1889, being the first day of the May term of said court. on the report of the master, and thereupon, in addition to the matters adjudged and ili the decree hereinbefore rendered on May 23, 1888, it is now ordered, adjudged; .and decreed that the report of the master be confirmed. and that complail:Umt have and recover of the defendant the sum of one cent nominal damages, and the costs of the reference to the master to be ta.'l:ed." The answer in this cause ftsserts that the defendant, appellant here, is now consti'ucting, selling, and using cultivators which arE;! exactly the same as those $old by David Bradley & Co.; that such cultivators are manufactured under and in accordance with letters patent of the United States No. 243,123, dated June 21, 1881, granted'ito Charles' A.Hague, aillI No. 270;629, dated January.16,1883, granted to Eyron C. Bradley. It also asserts the invalidity of the appellee's patent 'for want of novelty, and that the invention was antiOipatedby certa1:n letters plitent specifically stated. These defenses were pleaded to -the suit of this appellee against David Bradley & Co. See Manufacturing 00. v.Bradley,35 Fed. Rep. 295. The defenses here and there are sub· stantiallythesame, -exceptthflthere, in addition to the assertion of the patent to Dalton,common to the defenses in both -suits, prior knowledge and use byDalton Is asserted independently of Ws patent. It Is not claimed, however, that such: uSe and knoWledge goes further than the patent to 'Wm, pleaded, and- considered by the court In the Iowa suit. There Is tWs further exception: that by lUi-amendment to the answer here the appellant alleged prior use by "Charles- A,Hague, at CWcago, in the shops of the Furst & Bradley Manufacturing Company, now the Davld Bradley ManufactUring Company," In addition to the prior use asserted theretofore1:n the answers, both in the case here and In the suit in the -southern district of Iowa; The Hague patent was, however, asserted in the answer In the Iowa suit as one of the patents under wWch the appellant's cultivators were manufactured. The court below entered an 1:nterlocutory decree for the complainant, contain. lug the usual direction for an injunction, upon the ground that the decree in the Iowa case was binding upon the defendant, and precluded it from further contesting the validity of the complainant's patent. Eagle Manuf'g Co. v. David Bradley Manuf'g ,Co., 50 Fed. Rep. 103. The present appeal involves the correctness of that ruling.
Bond, Adams & Pickard,for appellant. GeorgeH. Christy, for appellee. Beforeand WOODS, Circuit Judges, and JENKINS, District Judge. JENKINS, District Judge, (after stating the facts.) The general rule that a judgment or decree of a court of competent jurisdicis conclusive. in any other suit between tion betweell 'two themol' their privies of every matter that wasdedded therein, and that was essential to. the decision made, is not here called in question. It is objected, however, that the rule ought not to goV'ern here, because-l!ir\lt, thedecree in the suit in the southern district of Iowa was, _ the bringing of this suit, interlocutory, and not final, and is not, therefore, res adjudicata; second, the ap-
DAVID
BRA.DLEy MANUF'G co.
tI. EAGLE HANUF'G CO.
985
pellee has failed by supplemental bill or otherwise to plead. the :final decree in the former suit, and the record thereof was therefore improperly allowed in evidence; third, that the appellee has by stipulation expressly waived its right to assert the former recovery; and, fourth, that a new defense, not involved in the former case, is here asserted. 1. The suit in the circuit court of the United States for the southern district of Iowa was brought to restrain the infringement of the same claims of the same patent here in question. The defendant there was the agent of the present appellant in the sale of the infringing machines. The defense of the suit there was assumed and prosecuted by the appellant here. The appellant was in fact the real party to that litigation, and, so far as the decree there is res adjudicata, is as effectively concluded thereby as if it were the actual defendant to the record. Lovejoy v. Murray, 3 Wall. 1, 18,19; Robbins v. Chicago, 4 Wall. 657, 672. That the decree was interlocutory at the bringing of this suit, and subsequently ripened into a final decree, does not impair its efficacy or conclusiveness when properly presented in this suit. The relative time of institution of suit, or the relative date of final decree, is not of consequence if the merits of the controversy be thereby fully and finally determined, and the record thereof is properly brought to the attention of the court. Duffy v. Lytle, 5 Watts, 120j_ Casebeer v. Mowry, 55 Pa. 81. 422; Child v. Powder Works, 45 H. 547. 2. It is doubtless necessary, where special pleading is required, that a former recovery should be pleaded in bar. There are eases where the record of a former recovery can be given in evidence without being specially pleaded; but this case is not one. of them. We are therefore to inquire whether the allegations contained in the bill are sufficient to admit the record, and whether any objection to its admission was laid upon failure to properly plead the former recovery; for, if the record be properly before us in evidence, although not well pleaded, we are not only at liberty to consider it, but are bound to give full effect to it. The bill in apt terms pleads the former suit, and the interlocutory decree rendered therein. Whether the pleader so charged it in the bill with. the view to invoke the doctrine of comity, or as a supposed bar to an apprehended attack upon the validity of the patent, we cannot say. If the latter, it may be doubted whether it would not better accord with correct principles of equity pleading to assert a former recovery in bar by replication or special plea. However that may be, the decree pleaded was not technically well pleaded as a bar, because, being interlocutory, while it affirmed the validity of the patent and the fact of infringement, it still remained in the breast of the chancellor, and was subject to change. But the appellant was advised by the bill that the interlocutory decree was relied upon by the appellee as a protection against further attack upon the patent in question, and no exception to the matter in the bill was taken. The object of all pleading is to fitly advise an opponent of the par-
.J'EDER,A.L "REPORTER , (j.; ·
v()l. 57.
ticular p.pon, that hem=;Ly,be. prepared to meett:h¢iJ?al'ticular mattet, and be not taken by surprIse. Here the . .far as .respects· the interlocutory decree-was not apprised of the position of its opponent; but by its the facts charged, and objected only to th'edecree that in rendering such judgment the court erred throughfailure to understand the operations of the Dalton mato the invention of the appellee. While, therefore, the bill· did n.ot,· in the view of strict pleading, present the isspeo'fa former recove.:rY, because it did not allege what did not at time exist,-the formal final decree,--::-still when that final decree was offered ,in. evidence it was properly allowed, and should be considered, unless proper objection was made to its receptiol). upon the particular ground that it had not been pleaded. C. A. --, Walsh Colclough, (7th Circuit,) 9 U. S. App. --. 56 Fed. Rep. 778. It was ,incum1>ent upon the appellant by fit objection at the time, or by subsequent motion to expunge, to its opponent of the precise ground of objection. have The objection could then have been obviated by amendment to the :bill" or by proper supplemental pleading. It is too late to urge such objection for the first time upon an appeal. It is to be further obsel,'ved that the record of the final decree was introduced in evidence upon the consent of· the appellant. The language of the stipulation is: "The defendant, though not appearing, consented in writing to the introduction of said proofs in so far as the same are material." . The stipulation covers four distinct matters allowed in evidence without other objection than that stated. The evident meaning of the stipulation is that the matters offered should all, be received in evidence, subject only to · the question of their bearing upon the merits of the controversy. It was it waiver, in our opinion, of all formal objection. "Materiality" means "the of substantial importance or influence, especially, as distinguished from formal requirement," (Bomier;) "substantial, as opposed .to formal," (Johnson.) It is clear to our minds that the only reservation made in the stipulation was the question of the influence of the evidence upon the controversy between the parties,-whether the evidence tendered was of substance as affecting the matter in dispute. .The stipulation ignores all formal requirements, all technical objections with respect to pleading, We, conclude, therefore, that the final decree is properly in evidence, and should be considered, and given its proper ,effect. 3. We are of opinion that the third objection, that the bar of a former recovery has waived, is not tenable. All that remained to give full and final effect to the interlocutory decree of May 23, 1888, was the ascertainment of the damages, and the formal entry of final decree,. This bill was filed June 11, 1888. On the 25th September1 1889, the parties stipulated that in the suit in the southern district of Iowa the master should report that the complainant (the. appellee here) had brought suit against the manufacturer (theapp,eUant here) of the infringing machines
()tity':'im,