Green v. City of Lynn

• Citation: 55 F. 516
• Decision Date: 07 April 1893
• Docket Number: 1,824.
• Parties: GREEN v. CITY OF LYNN.
• Court: U.S. District Court — District of Massachusetts

55 F. 516

GREEN v. CITY OF LYNN.

No. 1,824.

United States Circuit Court, D. Massachusetts.

April 7, 1893

T. W Porter, for complainant.

John R Baldwin, for defendant.

PUTNAM Circuit Judge.

Preliminary to the final hearing of this case a question of proof arose which was disposed of at the time without examination of authorities, and should now be restated. The defendant called the attention of the court to the opinion of the supreme court in Andrews v. Hovey, 123 U.S. 267, 8 S.Ct 101, reaffirmed February 10, 1888, (124 U.S. 694, 8 S.Ct. 676,) declaring void one of the patents in issue here on the ground of prior public use. This opinion involved a serious question of law touching the construction of section 7 of the act of March 3, 1839, then for the first time settled; and also a question of fact whether or not there had been a prior use within the meaning of that statute as construed by the court. The court found against the patent on the issue of law, and also on that of fact. This decision was handed down in November, 1887, more than four years after the bill in this case was filed, and more than four years before the question hereinafter stated was raised in this court, so that the defendant had more than ample time to put itself in proper position to avail itself of the conclusions in Andrews v. Hovey.

Under these circumstances, the defendant produced and offered in evidence two large volumes, containing the record in Andrews v. Hovey, prepared and printed in accordance with rule 10 of the supreme court, (3 S.Ct. viii.) I refer to that rule in this connection in order to specifically describe the nature of the volumes thus offered in evidence, and to clearly distinguish them from a certified copy of the record of the court in the strict sense of the word, although I am not aware that the latter would have met the purpose in question any better than the volumes offered. There was not offered with these volumes any independent evidence of the facts proven in Andrews v. Hovey, although subsequently a certified copy of the deposition of the complainant in this case given in Andrews v. Hovey was put in evidence, the same being clearly relevant,-- not as a deposition, but as an admission.

The complainant objected to the reception of the two volumes in question, and April 26, 1892, moved that the same be stricken from the record. It then appeared that the volumes had simply been produced before the examiner, with the intention of filing them as evidence in the cause, but had never been formally thus filed; so that the motion of the complainant was in all respects seasonable. At the hearing on this motion neither counsel was able to produce authorities bearing upon it, or to satisfy the court that any special practice in suits of this nature had become established. Thereupon the court applied to the case well-known rules of evidence governing proceedings in equity, as well as at law, and granted the motion of the complainant. The court has since been able to make some examination of the authorities, and believes its rulings to be fully sustained by them.

It is to be observed that this question did not arise on a motion for an ad interim injunction, with reference to which the rules of evidence are not strict, but are molded to meet the convenience of a summary hearing. This may safely be done, as the ultimate rights of parties are not then involved.

Of course the findings of the supreme court in Andrews v. Hovey on questions of law are conclusive on all other courts. The same is true, as to its findings of fact, with reference to any other cause in which the court perceives that the proofs are substantially the same as those which came before the supreme court. The reasons for this need not be elaborated, but this distinction is to be noted: that, when the parties are not the same in each case, the determinations of issues of fact by the supreme court do not operate strictly as res adjudicata, or as a technical estoppel, but merely upon the conscience of the inferior tribunal. How are the cases to be brought together for this purpose? An answer based on the fundamental rules of law seems simple. First, it is essential that the facts brought to the attention of the supreme court should be proven in the pending cause independently, according to the ordinary rules of evidence; and thereupon the court in the pending cause should advise itself as best it may of what appeared to the supreme court,--ordinarily from the opinion rendered by it, and, if this is not sufficient in detail, from an informal perusal of whatever was laid before it. As this ascertainment is merely to inform the conscience of the court in the pending cause, and to enable it to follow the line of reasoning and conclusions of the appellate tribunal, there is no occasion for burdening the case with the formal proof of what appeared in the supreme court, nor is there any propriety in so doing. Therefore, it was that this court granted the motion of the complainant to strike out the two volumes in question, and held that the defendant, if it sought to avail itself of the reasoning and conclusions in Andrews v. Hovey, must prove the substantial matters which there appeared as independent facts according to the usual rules of evidence.

3 Rob.Pat. §§ 1017, 1175, touches this question. This portion of this work must, however, be read with care, because, as is too frequent in discussions of this and kindred questions, sufficient discrimination is not made between the rules touching interlocutory and ad interim injunctions, and those pertaining to final hearings. The court conceives, however, that the author correctly states the principle in section 1175 as follows: 'The weight to be attached to any judgment in favor of a patent, as evidence of its validity in future actions, depends upon the identity of parties, the identity of issues, the identity of testimony,' and so on. By the words 'the identity of testimony' the author evidently means that the same facts must be proven in each case independently.

In Edgarton v. Manufacturing Co., 9 Fed.Rep. 450, the court, being asked to apply decisions in several cases to a pending patent cause, said as follows: 'But the proofs in Brown v. Whittemore,' (5 Fish.Pat.Cas. 524,) meaning one of the other cases, 'on the question of prior use and sale with the consent of the patentee, and in Edgarton v. Breck,' (5 Ban.& A. 42,) meaning also one of the other cases, 'on the question of invalidity, do not seem to have been the same as in the cases now before the court. * * * Of course, if the testimony in these cases was substantially the same as that in the cases heretofore decided by the learned judges in the Massachusetts circuit court, I should feel wholly bound by their decisions, and the construction of the patent given by them. ' In McCloskey v. Hamill, 15 F. 750, the court, touching a like proposition, said: 'The facts which the plaintiff proved upon the second hearing (meaning a second hearing in a prior cause) are the same which he relies upon in this case. ' In Celluloid Manuf'g Co. v. Zylonite Brush & Comb Co., 27 F. 291, the court said, (page 295:) 'The facts presented by the record are so strictly similar to those in' (naming a case on the same patent, previously heard by another tribunal.) In American Bell Tel. Co. v. Wallace Electric Tel. Co., 37 F. 672, the court spoke of 'the examination of the record,' meaning plainly the record in the then pending case, made to ascertain whether distinguishable from cases theretofore decided.

None of these expressions indicate that the question now under consideration was formally presented, nor do they show distinctly how the record in each pending suit was made up; but the form of them carries a decided impression that no rule, except that which this court adopted, as already stated, ever occurred to them. Therefore, in applying the conclusions of Andrews v. Hovey, this court is-- First, to inquire what facts are proven in the pending case by independent evidence, given under the ordinary rules of law; and, second, to examine the opinions of the opinions of the supreme court, and the line of reasoning and conclusions which they exhibit, and from these or otherwise-- but not by formal evidence-- become satisfied whether or not the proofs of which the latter court took cognizance were substantially the same as those in the case at bar. If they were, its line of reasoning and conclusions bind the conscience of this court upon the questions of fact involved; otherwise they fail to do so, perhaps wholly, perhaps in part.

It is true that this method of proceeding may produce a result on questions of fact differing from the latest findings of the supreme court, but in this respect we have the example of that court itself, as shown with...