American Bell Tel. Co. v. National Imp. Tel. Co.

• Decision Date: 31 May 1886
• Parties: AMERICAN BELL TELEPHONE CO. and others v. NATIONAL IMPROVED TELEPHONE CO. and others. [1]
• Court: U.S. District Court — Eastern District of Louisiana

27 F. 663

AMERICAN BELL TELEPHONE CO. and others v. NATIONAL IMPROVED TELEPHONE CO. and others. ^[1]

United States Circuit Court, E.D. Louisiana.

May 31, 1886

J. J Starrow, T. J. Semmes, T. L. Bayne, Geo. Denegre, E. N Dickerson and Geo. L. Roberts, for complainants.

J. R Beckwith, E. H. Farrar, E. B. Kruttschnitt, J. M. Bonner, and A. G. Brice, for defendants.

Before PARDEE and BILLINGS, JJ.

BY THE COURT.

This cause is before us on an application for a preliminary injunction, upon bill, answers, numerous affidavits depositions, and exhibits. We heard the application discussed by the solicitors on both sides, with many adjuncts of experiment and illustration, for the period of 21 days, and we have striven to give to the question the study and consideration to which it is entitled, from the fact that so many of our fellow-citizens throughout the entire country are interested in its decision. A very long discussion, in which solicitors of ability and learning participated,-- such as has been the one conducted before us,-- has one great advantage: it tends to separate, by a clear line a demarcation, that which is sound in law and sustained in fact, from that which, however plausible and forcibly urged, analysis and proof compel the abandonment of.

The complainants have urged that since the patents involved here have been the subject of judicial investigation, ending in decisions in the circuit courts of the United States maintaining their validity, that, so far as the issues presented in those causes have been identical with those involved in this cause, for the purposes of granting a preliminary injunction to run pendente lite, those prior decisions elsewhere obtained are sufficient. We assent to this doctrine.

The proofs submitted to us include decrees affirming these patents by Mr. Justice GRAY, Mr. Justice MATTHEWS, Judge LOWELL, Judge BLATCHFORD, Judge WALLACE, Judge NIXON, Judge McKENNAN, Judge BUTLER, Judge ACHESON; with opinions at more or less length by Mr. Justice GRAY, Judge LOWELL, and Judge WALLACE. It has been urged by the respondents that in all these causes save one there was either an absence of one or more of the defenses here urged, or collusion between the parties, and consequent imposition upon the courts; so that the decrees and decisions submitted, and referred to above, should not of themselves be the basis of the decision and decree here. In the Molecular Case, decided by Judge WALLACE last June, there has been no charge of collusion, and consequent imposition. We think that these causes abundantly show that the substantial defenses here submitted have been urged in several of those cases, (though perhaps they have not been urged with the vigor and persistence that have characterized the defense here,) and that the settled practice in the circuit courts of the United States would authorize the granting of the injunction pendente lite upon the authority of the decrees in those cases. We do not understand that the weight given by one circuit court to the adjudications of another rests entirely upon the basis of comity, but as well upon that of recognized rights, and of convenience; and that it is largely to prevent the necessity of more than one court going through with the investigation of the same facts that the inference derived by the first court is for the purpose of determining whether or not an injunction shall go till the final decree, adopted by the other circuit courts. In addition to the weight to be given to the adjudications in favor of the Bell Company in other circuits on the basis of convenience, comity, and recognized rights, it is urged that the National Improved Telephone Company, the principal defendant here, is estopped by the final decree rendered by Judge McKENNAN in the Pittsburg Case, because it was privy to that suit, and had a day in court there.

The evidence shows that the National Improved Telephone Company, claiming to own certain letters patent pertaining to telephony, was the licensor of the Pittsburg Company, and contract, for a consideration received, that in the case of any litigation involving the validity of said letters patent, or any of them, wherein the Pittsburg Company should be a defendant, the said National Improved Telephone Company should have prompt notice thereof, and should assume control of said litigation, and, at its option, be made a party thereto at its own expense; that the Pittsburg suit did involve the validity of said letter patent; that the National Improved Telephone Company was promptly notified thereof, and did assume control of the litigation, preparing an elaborate defense, and appearing therein by counsel, who were heard by the court, and that, becoming dissatisfied by the refusal of the court to go behind the decrees of other circuits in the matter of a preliminary injunction, the National Improved Telephone Company 'ordered the immediate withdrawal from the court of all the evidence, instruments, and documents of every character connected with the defense,' and 'immediately dismissed the counsel in said case.'

In Robbins v. Chicago, 4 Wall. 657, it is said:

'Conclusive effect of judgments respecting the same cause of action, and between the same parties, rests upon the just and expedient axiom that it is for the interest of the community that a limit should be opposed to the continuance of litigation, and that the same cause of action should not be brought twice to a final determination. Parties in that connection include all who are directly interested in the subject-matter, and who had a right to make a defense, control the proceedings, examine and cross-examine witnesses, and appeal from the judgment. Persons not having those rights substantially are regarded as strangers to the cause; but all who are directly interested in the suit, and have knowledge of its pendency, and who refuse or neglect to appear and avail themselves of those rights, are equally concluded by the proceedings.'

See, also, Chicago v. Robbins, 2 Black, 418.

To the same effect are Cromwell v. County of Sac, 94 U.S. 351; Chamberlain v. Preble, 11 Allen, 370; Tredway v. Sioux City, 39 Iowa, 663.

The rule is applied in patent cases. Robertson v. Hill, 6 Fisher, 465; Miller v. Liggett, 7 Fed.Rep. 91.

No authorities are cited to the contrary, but counsel have argued that the National Improved Telephone Company had a right to withdraw from the litigation, and that thereupon, in some unaccountable way, the company was released from all responsibility, and that the complainant had no right to proceed to a decree. We cannot avoid the conclusion that so far as the National Improved Telephone Company is concerned in this suit, that it is bound and concluded by the final decree rendered at Pittsburg, and that that decree alone warrants the injunction pendente lite in this case, as against said telephone company and its privies.

But since we have had the cause so exhaustively presented, and we have so fully considered it, we have determined not to rest our conclusions upon the decrees in the other circuits, sufficient as we deem those to be, but to examine the questions de novo.

It is urged by the defense that there should be given a weight to the fact that the executive department of the government has directed the institution of a suit to annul this patent that should lead us to refuse to defer any affirmation of the patentee's rights till the conclusion of that suit. To this we cannot assent. The executive department has not in this case attempted to adjudicate rights, nor could it in any case do more than start the judicial inquiry, and present the cause to the courts. The filing of an information cannot create a presumption of guilt. No more can the institution of a suit to annul, create a presumption of nullity. If any effect is to be given to the pendency of this suit to annul so as to suspend any rights of the patentee, it could only result from restraining or other orders issued in that suit, where the court having the parties and the evidence upon which the nullity is sought to be established before it, has also the authority, if to annul, then to suspend the force of the patent. There is a class of cases where the decision of the executive is conclusive upon the courts. This class includes those which present political questions,-- such as which is the lawful government in a state or in a foreign country,-- questions connected with functions of sovereignty, where promptness and unity of action in all the departments of government are essential. All questions properly judicial are, by the very constitution, embraced within the judicial power, and submitted exclusively to the courts...