Day v. Combination Rubber Co.

• Decision Date: 06 May 1880
• Parties: DAY v. COMBINATION RUBBER CO. and another.
• Court: U.S. District Court — Southern District of New York

2 F. 570

DAY v. COMBINATION RUBBER CO. and another.

United States Circuit Court, S.D. New York.

May 6, 1880

Miles B. Andrus and Edward N. Dickerson, for complainant.

M. P Stafford, for defendants.

In Equity.

WHEELER D.J.

This bill is brought for relief against an alleged infringement of letters patent No. 61,172, dated January 15, 1867, to Thomas B. De Forest, for an improvement in binding for skirts, and now owned by plaintiff.

The defences set up in the answer are that the defendant, the rubber company, is operating under a patent, No. 155,134 dated September 20, 1874, to Helen Marie MacDonald, for an improvement in dress protectors, and that they do not infringe the plaintiff's patent.

While the application of MacDonald was pending an interference was declared between her and one Chase, in the decision upon which Mr. Commissioner Leggett expressed an opinion that her invention dated back to 1861. MacDonald v. Chase, 6 Off.Gaz. 359.

Afterwards she brought a bill in the circuit court for the district of Massachusetts for an infringement of her patent, and in that case it was found, upon the evidence, by Shepley J., that she was the first inventor of the skirt protector described in her patent. The case was afterwards opened for the introduction of the De Forest patent, and, upon the case as presented with that patent in evidence, Lowell, J., found that her invention was made in 1861, before the patent of De Forest.

In the subsequent cases of MacDonald v. Shepard, in the district of Massachusetts, and MacDonald v. Sidenberg, in this district on motions for preliminary injunctions, the decisions in the former case were followed by Lowell, J., there, and Blatchford, J. here, and temporary injunctions ordered. None of the evidence on which those findings were based in any of those cases has been reproduced in this case, nor have the defendants even set up any prior knowledge or invention, or use, in their answers to defeat the patent of De Forest.

On the hearing they have produced copies of the opinions filed in those cases, and argued that those decisions conclusively settle that MacDonald's invention was prior to De Forest's. None of the parties to this suit were parties to any of those; neither is it shown that any of these parties are privies to those, and it is elementary that judgments and decrees, in order to be conclusive evidence of facts, or evidence at all in other proceedings, must be between the same parties, or privies to them. These decisions and opinions are authorities for all similar cases, but not estoppels in any, except such as may arise between those very parties, or others claiming under them. This case stands upon its own evidence, which shows nothing prior to the plaintiff's patent, except that Miss MacDonald was asked by the defendants, expressly disclaiming any intention of proving prior knowledge of De Forest's invention, when she commenced experimenting in water-proof skirt protectors and answered in 1861; and, further, that she made skirt protectors of water-proof material and attached them to the skirt, so as to extend below the lower edge as a protection to the lower part of the skirt and braid, and wore...