Bryant Electric Co. v. Marshall

• Decision Date: 24 March 1909
• Docket Number: 537.
• Citation: 169 F. 426
• Parties: BRYANT ELECTRIC CO. v. MARSHALL.
• Court: U.S. District Court — District of Massachusetts

169 F. 426

BRYANT ELECTRIC CO. v. MARSHALL.

No. 537.

United States Circuit Court, D. Massachusetts.

March 24, 1909

Howson & Howson and Hubert Howson, for complainant.

Whipple Sears & Ogden, for defendant.

LOWELL Circuit Judge.

Marshall the defendant in the suit now before the court, brought a bill in equity, hereinafter called the 'first suit,' against the Pettingell-Andrews Company, to restrain the infringement of letters patent No. 784,695. The bill alleged that the defendant, 'in infringement of said letters patent and the claims thereof, * * * infringed said letters patent,' and sold large quantities of articles embodying the patented invention. The Pettingell-Andrews Company answered denying the validity of the patent and its infringement. A replication was duly filed, and evidence was taken. At the beginning of his examination, the complainant's expert was asked if he had read the above-mentioned patent, 'and particularly claims 5 and 9 thereof. ' A general examination of the record shows that the complainant's case was limited in effect to claims 5 and 9. The learned judge sitting in the Circuit Court began his opinion by stating that claims 5 and 9 were in suit. His opinion was confined to a consideration of these claims. He said, 'I find that both claims are void in view of the prior art,' and thereupon the bill was dismissed. 153 F 579. The complainant thereupon appealed to the Circuit Court of Appeals. In delivering the opinion of the Circuit Court of Appeals, 164 F. 862, Judge Colt said:

'The present bill is brought for infringement of claims 5 and 9 of the Marshall patent. * * * The complainant in the present suit has seen fit to rely upon claims 5 and 9 of the Marshall patent, and the only question before us is whether these claims are void for want of invention. * * * We now come to the claims of the patent, and we will first consider some of the claims which are not in issue. ' Reference was made to claims 1, 2, 3, 4, and 6. 'We now come to the consideration of the two claims in issue. * * * This case is limited to the consideration of the validity of claims 5 and 9 of the Marshall patent, and for the reasons given we must hold that these broad claims are void for want of invention in view of the prior art. Other claims of the patent are not before us, and we therefore express no opinion as to their validity.'

The decree of the Circuit Court dismissing the bill was affirmed.

Thereafter Marshall brought a bill in equity in this court against the Western Electric Company, hereinafter called the 'second suit.' This bill, as now amended, alleged that Marshall--

'through a mistake, and without willful default or intent to defraud or mislead the public, included in his specifications (of the above-mentioned letters patent) two claims, to wit, claims 5 and 9, which have been subsequently held by the United States Circuit Court of Appeals for the First circuit in a suit between said Marshall and the Pettingell-Andrews Company to be invalid, and this suit is now prosecuted for the infringement of the other parts of said letters patent, and the claims thereof excluded claims 5 and 9.'

The rest of the bill, in the usual form, alleged infringement of the patent, 'excluding claims 5 and 9.' Thereafter the complainant filed the bill in equity now before the court, hereinafter called the 'third suit,' to enjoin Marshall from proceeding with the second suit. The bill in the third suit alleged the facts above stated, and, in addition, that the Bryant Electric Company was the manufacturer of the articles alleged to infringe in the first and second suits; that it took full and exclusive charge of the defense of both the first and the second suits; that the articles alleged to infringe in the two suits were similar; that Marshall by his proceedings sought to harass the complainant in the third suit by bringing suits successively against its customers; that these suits injured the complainant's business, wherefore, inasmuch as this court had already decided that no in-infringement existed, the complainant prayed that Marshall might be restrained by injunction from proceeding with the second suit, and from bringing like suits against the complainant's other customers.

To this bill the defendant demurred upon the following grounds: (1) That in the first suit the court passed only upon claims 5 and 9 of the patent, while in the second suit those claims were excluded, and only the other claims of the patent were relied upon. Hence the invalidity of the Marshall patent generally was not res judicata. (2) Because the complainant was not a party to the first suit. The case was heard by this court upon the demurrer, and upon the complainant's motion for an injunction pendente lite.

In Kessler v. Eldred, 206 U.S. 285, 27 Sup.Ct. 611, 51 L.Ed. 1065, a case of first impression, and chiefly relied upon by the complainant, the Supreme Court held that a defendant who had established the defense of invalidity in a suit for the infringement of a patent was entitled to an injunction protecting his customers from suits brought by the same complainant to restrain like alleged infringements of the same patent. To establish its right to the relief sought in the third suit, the complainant Bryant Company must therefore show, first, that the decree in the first suit barred other proceedings between the parties to restrain similar alleged infringements of the claims of the Marshall patent other than claims 5 and 9; second, that the Bryant Company was in legal effect a party to the first suit. If the complainant shall establish these two points, the defendant does not dispute that the case at bar is brought within the decision in Kessler v. Eldred.

1. The language both of the Circuit Court and of the Circuit Court of Appeals in the first suit shows plainly that those courts considered no claim of the Marshall patent other than claims 5 and 9. Neither of those courts intended to pass expressly or by implication upon the general validity of any of the other claims. These other claims were expressly omitted from the consideration of the higher court. But the complainant contends that the decree in the first suit, although the opinion therein was limited to claims 5 and 9, effectually barred proceedings...