Marshall v. Bryant Electric Co.
| Decision Date | 01 March 1911 |
| Docket Number | 906. |
| Citation | 185 F. 499 |
| Parties | MARSHALL v. BRYANT ELECTRIC CO. |
| Court | U.S. Court of Appeals — First Circuit |
Whipple Sears & Ogden (Everett D. Chadwick and Alexander Lincoln, of counsel), for appellant.
Howson & Howson (Hubert Howson and Charles Howson, of counsel), for appellee.
Before PUTNAM, Circuit Judge, and ALDRICH and DODGE, District Judges.
The final decree appealed from by the defendant below perpetually enjoins him from prosecuting a suit in equity brought by him in the Circuit Court against the Western Electric Company on October 6, 1908. He owns United States patent 784,695, and his bill in the suit referred to sought an injunction and an accounting upon the charge that the Western Electric Company was infringing that patent. The alleged infringement consisted in selling and using certain insulating linings of a kind claimed to be within that patent. The Bryant Electric Company, complainant below makes the linings in question, and sells them to the Western Electric Company, which deals in them.
The bill seeking to restrain the prosecution of this suit was filed in the Circuit Court by the appellee here on December 5, 1908. The patentee demurred to the bill, but his demurrer was overruled, and a preliminary injunction granted. 169 F 426. He then answered the bill, and on final hearing was perpetually enjoined. His present appeal is from all these orders and decrees.
The Circuit Court stayed the prosecution of his suit against the Western Electric Company because of the final decree in Marshall v. Pettingell-Andrews Co., a suit brought by him in 1905, in the same court, upon the same patent, for an alleged infringement consisting in the sale and use of similar insulating linings, and to which suit the Bryant Electric Company was privy, as will be explained later. After a hearing on bill, answer, and replication the bill was dismissed by final decree entered June 3, 1907. 153 F. 579. The dismissal was affirmed by this court September 25, 1908. 164 F. 862, 91 C.C.A. 8. In the suit now here on appeal, the Circuit Court regarded this final dismissal of the bill in Marshall v. Pettingell-Andrews Co. as a final determination, between this patentee and a party defendant in legal effect the same, of the same questions which he sought to raise by his bill against the Western Electric Company, and as conclusive against his right to maintain the latter suit, this appellee objecting.
In his bill against the Pettingell-Andrews Company, Marshall alleged, in the usual form, infringement of his patent 'and the claims thereof.' The answer denied the validity of his patent, and set up that it was void for a variety of specified reasons. It also denied infringement of the patent 'or the claims thereof,' and it was followed by Marshall's replication in the usual form. These issues having been thus raised, Marshall gave notice on the record on January 10, 1906, after offering his original letters patent in evidence, but before taking any further evidence, 'that the complainant alleges and will take evidence to show infringement of claims 5 and 9 thereof. ' There were nine claims in all, but Marshall maintained the position announced as above, without subsequent change or modification of any kind throughout the proceedings, and put his case on these two claims only. The decree of June 3, 1907, dismissing the bill, recited to be 'on final hearing on pleadings and proofs,' was absolute and unqualified in its terms. No intimation from Marshall anywhere appears from the entry of his notice given January 10, 1906, until after the final decree on mandate, of any claim by him that the insulated linings in question infringed any other claims of his patent. No objection appears to have been suggested by him to the entry of the final decree in the form in which it stands.
It being admitted that there is no material difference between the insulating linings claimed to infringe the patent in the suit thus dismissed and those claimed to infringe it in the suit against the Western Electric Company, we are of opinion that the Circuit Court rightly held the patentee barred by the former judgment against him from maintaining the latter suit. It is true that both the courts which passed upon the issues raised in the former suit expressly limited their investigation to the two claims upon which the then complainant elected to stand, and that they expressly abstained from giving any opinion regarding the other seven claims of his patent. But this was the result of the patentee's own choice.
It was not the result, so far as appears, of any request or consent on the part of his adversary or of any ruling by the court. He had by his bill invoked the decision of the court upon the validity and scope of his entire patent in its application to the alleged infringing articles, and had found himself opposed by the alleged infringer upon all the points involved in the controversy he thus opened, and he cannot say that he has not had his day in court upon all the questions thus raised. The pleadings had put in issue (1) the validity of his entire patent, or at least its validity if so construed as to make the insulating linings complained of infringements of it; (2) whether such insulating linings did in fact infringe the patent or any of its claims. By the course he thereafter adopted in the litigation upon these issues, we think he voluntarily took the risk of losing by the final decree all right to assert that his patent has any validity for the purpose of giving him the exclusive right to make sell, or use such linings as we now have before us, or to assert that they infringe his patent or any of its claims, so far as the Pettingell-Andrews Company or any one else in legal effect a party defendant in the same suit is concerned. If any claims of his patent were not expressly dealt with by the court, it was not because they were not before the court for its decision, but because he voluntarily abandoned the attempt to make good his contention regarding them. ...
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...States v. Masonite Corp., 316 U.S. 265, 62 S.Ct. 1070, 86 L.Ed. 1461. 3 Bryant Electric Co. v. Marshall, C.C., 169 F. 426, affirmed 1 Cir., 185 F. 499. Compare Souffront v. La Compagnie, etc., 217 U.S. 475, 30 S.Ct. 608, 54 L.Ed. 846. And see cases collected 139 A.L.R. 1 I Holmes-Pollock Le......
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