Birdsell v. Shaliol - 112 U.S. 485 (1884)
U.S. Supreme Court
Birdsell v. Shaliol, 112 U.S. 485 (1884)
Birdsell v. Shaliol
Argued November 12, 1884
Decided December 8, 1884
112 U.S. 485
Judgment for and payment of nominal damages upon a bill in equity by a patentee, without joining his licensee, against one who has made and sold a machine in violation of the patent, are no bar to a bill in equity by the patentee and licensee together, for the benefit of the licensee, against another person who afterwards uses the same machine.
This was a bill in equity for an injunction and damages for the infringement of a patent for an improvement in machines for threshing and hulling clover seed. The answer set up a former decree as an estoppel. The case was heard in the circuit court upon a statement of facts agreed by the parties, by which it appeared to be as follows:
Birdsell was the inventor and patentee of the improvement, and granted to the Birdsell Manufacturing Company, a corporation of which he was the president and active manager and owner of a large part of the stock, an exclusive oral license to make, vend, and use his invention, but did not give it authority to license others to make, vend, and use. The corporation paid him no royalty, but set apart a sinking fund to defray the expense of defending the patent in the courts.
A former suit in equity was brought by Birdsell against the Ashland Machine Company for an infringement of his patent by making and selling large numbers of machines. The Birdsell Manufacturing Company was not made a party to that suit, but participated in instituting it and carrying it on till its close. In that suit, a perpetual injunction was decreed, and the case was referred to a master, before whom damages sustained by the Birdsell Manufacturing Company were proved and claimed, and who reported that the defendant had made no profits for which it should account, and that if any damages had been sustained, they had been sustained by the Birdsell Manufacturing Company, a stranger to the suit, and that Birdsell, the plaintiff,
was entitled to recover only one dollar as nominal damages. The Ashland Machine Company afterwards, pending that suit, became insolvent, and a decree was rendered in Birdsell's favor according to the master's report, for nominal damages and for costs, which were paid by that company.
The present suit was brought by Birdsell and the Birdsell Manufacturing Company against Gerhart Shaliol and John Feikert, who had used one of the machines manufactured by the Ashland Machine Company and embraced in the master's report in the suit against that company.
The circuit court held that in the former suit the Birdsell Manufacturing Company, although not named as a party plaintiff in the bill, was in reality a co-plaintiff with Birdsell, and that, by the final decree in that suit and the recovery and payment of nominal damages, Birdsell and the Birdsell Manufacturing Company were estopped to maintain the present bill, and therefore dismissed the bill, with costs. The plaintiffs appealed to this Court.