Keller v. Stolzenbach

• Decision Date: 20 March 1884
• Citation: 20 F. 47
• Parties: KELLER and others v. STOLZENBACH and others.
• Court: U.S. District Court — Western District of Pennsylvania

20 F. 47

KELLER and others v. STOLZENBACH and others.

United States Circuit Court, W.D. Pennsylvania.

March 20, 1884

Bakewell & Kerr and D. F. Patterson, for complainants.

Geo. H Christy, for defendants.

ACHESON J.

Nicholas J. Keller, one of the plaintiffs, and Philip M. Pfeil, one of the defendants, entered into partnership on April 26, 1870 in the business of dredging and dealing in sand and gravel the partnership lasting until April 10, 1875, when it was dissolved by mutual consent. During the existence of the partnership Keller invented a sand and gravel separator, for which letters patent were granted to him on May 21, 1872. With his consent, and at the firm expense, the patented apparatus was put on two boats owned by the firm,-- one called the Hippopotamus, the other the Rainbow,-- and was used thereon without charge during the continuance of the partnership. The firm paid the fees and costs of procuring the patent, and the expenses of some litigation which ensued. The evidence, however, tends to show that this outlay was more than made good by the advantage and benefits accruing to the firm from the free use of the invention on said boats. Upon the dissolution of the firm each partner took at an agreed value one of the boats,-- Keller, the Hippopotamus Pfeil the Rainbow,-- each then having the patented machine thereon. A contest immediately arose as to the right of Pfeil to use the patented machine on the Rainbow, and Keller filed a bill in this court to restrain such use, alleging that the privilege had not passed with the boat. The decision of the court, however, was against him, and his bill was dismissed. Subsequently Pfeil built another boat called the Wharton McKnight, and placed and used thereon the patented apparatus. Thereupon Keller filed in this court another bill against Pfeil and his associates to restrain the infringement of his patent. To this bill the defendants filed a plea setting up the same matters of defense now relied on. To this plea the plaintiff did not reply, nor did he set down the same for argument. Wherefore a decree dismissing the bill was entered under, and in the terms of the thirty-eighth rule in equity, viz.:

'If the plaintiff shall not reply to any plea, or set down any plea or demurrer for argument, on the rule-day when the same is filed, or on the next succeeding rule-day, he shall be deemed to admit the truth and sufficiency thereof, and his bill shall be dismissed as of course, unless a judge of the court shall allow him further time for the purpose.'

The defendants plead the decree entered under this rule in bar of so much of the present bill as relates to the Wharton McKnight, or the use of the patented invention thereof. Whether this position is well taken is the first question in the case. That such decree is not conclusive, is, I think evident from the authorities, they all agreeing that in order to constitute the former judgment or decree a bar, it must appear that the point in issue was judicially determined after a hearing, and upon consideration of the merits. 1 Greenl.Ev. §§ 529, 530; Story, Eq. Pl. Sec. 793; Badger v. Badger, 1 Cliff, 237, 245; Haws v. Tiernan, 53 Pa.St. 192; Hughes v. U.S. 4 Wall. 232. In Homer v. Brown, 16 How, 354, it was held that a judgment of non-suit, entered upon an agreed statement of facts submitted to the court for decision, was not a bar to a subsequent suit between the same parties, and for the same cause of action. Says CLIFFORD, J., in Badger v. Badger, supra, if the order of dismission was not upon the merits of the bill, it matters not whether it was with or without the consent of the complainant. And Mr. Justice FIELD says in Hughes v. U.S. supra, 'if the first suit * * * was disposed of on any ground which did not go to the merits of the action, the judgment rendered will prove no bar to another suit.' 4 Wall. 237. Now, the primary purpose of rules of court being to regulate the practice, and promote the dispatch of business, the intention to create an estoppel ought not to be lightly imputed to the rule now under consideration. Such effect, it seems to me, is foreign to the object to be subserved. True, the rule declares that the plaintiff so in default 'shall be deemed to admit the truth and sufficiency' of the plea, but this implied...