On the findings and the facts detailed in the statement and in
the opinion of this Court, it is held that a former judgment of the
Court of Claims in an action by Hubbell against the United States
in favor of the defendant was upon the same cause of action which
is set up in this suit, and, it not having been reversed or set
aside or appealed from, the claim herein set up is
res
judicata, and the plaintiff is estopped from prosecuting it in
this action.
This was an appeal from a judgment of the Court of Claims
dismissing the petition of William Wheeler Hubbell, who, as
patentee of an "improvement in cartridges," claimed that the United
States had manufactured and used cartridges covered by his patent
under an implied contract to pay a reasonable royalty therefor.
The petition contained, among others, the following allegations:
that
"your petitioner is the first and original inventor of an
improvement in cartridges for which letters patent of the United
States were granted to him in due form of law and, according to
law, dated and issued the 18th day of February, A.D. 1879, vesting
in him the exclusive right to make, vend, and use the same for
seventeen years from the date thereof."
"Your petitioner has pending a suit for compensation up to March
31, 1883, case No. 13,793 in the Court of Claims, and has never
sued any officer nor brought any other suit than that before this
present petition."
"Your petitioner prays for an account of the full and entire
number of the said cartridges made or used by the defendant, its
officers or employees in its service, or for distribution to the
states, since the said March 31, 1883, to be separately stated when
ordered, and for leave to make the same a part of this petition
when precisely ascertained by amendment. "
Page 171 U. S. 204
"Your petitioner further claims a just compensation for the
making or use by the defendant, its authorized officers or
employees, for its service, of his said patented invention of
cartridge, to-wit, he claims the sum of one hundred and ten
thousand dollars due to him on this behalf by the United States
from the 31st March, 1883, up to May 31, 1888."
"And he prays for judgment for all making or use of his said
patented invention from the said 31st March, 1883, to said 31st
May, 1888, by the defendant, its authorized officers or employees
in its service, or on its behalf, in pursuance of law, in the sum
of one hundred and ten thousand dollars, with leave to amend his
petition in this behalf when the precise numbers have been duly
reported by the proper departments of the United States."
Upon the trial of this case, the Court of Claims made, among
others, the following finding:
"The facts in this case are the facts already found in case No.
13,793, between the same parties as to the same subject matter,
except as to the time since the beginning of the other action,
during which time, to-wit, from the beginning of the other action
to the beginning of this action, the government manufactured
cartridges of the same form and kind as those described in these
findings, known as the 'reloading cartridge,' in which said case
No. 13,793 the following proceedings were had, and the following
facts were found, which facts are now found herein, and are hereto
annexed, as follows, to and including finding VIII."
The IXth finding is as follows:
"The following are, in substance, the proceedings had in case
No. 13,793, between the same parties:"
"April 19, 1883. Petition filed."
"May 18, 1883. Amendment to petition filed by allowance of judge
at chambers."
"June 4, 1883. Traverse filed."
"July 25, 1883. Amendment to petition filed and allowed."
"October 2, 1884. Amendment to petition filed and allowed."
"December 15, 1884. Amendment to petition allowed."
"January 10, 1885. Claimant's requests for facts and brief
filed. "
Page 171 U. S. 205
"April 9, 1885. Additional brief for claimant filed."
"April 13, 1885. Defendants' requests for facts and brief
filed."
"April 16, 1885. Argued and submitted."
"April 16, 1885. Claimant's brief of argument filed."
"April 20, 1885. Waiver filed by claimant."
"June 1, 1885. Davis, J., filed the opinion of the court.
Petition dismissed. Findings of fact filed."
"August 14, 1885. Motions for new trial, amendment of findings
and for reversal of judgment filed by claimant."
"August 21, 1885. Application for appeal filed by claimant."
"December 14, 1885. Motion of claimant for new trial overruled,
with leave to submit to the consideration of the court. Findings 2,
3, 4, amended in the form requested by claimant in his motion,
subject to objection of the defendants to their allowance."
"October 8, 1886. Claimant's request for findings of fact filed
under order of court."
"March 15, 1887. Requests, etc., of October 8, 1886, ordered to
law docket."
"April 15, 1889. Motion to amend findings continued."
"November 18, 1889. Continued."
"November 12, 1891. Motion of claimant to amend order of court
filed."
"November 16, 1891. Motion of claimant to amend order of court
heretofore entered as to the evidence to be used on the trial
allowed, subject to objections of defendants on the argument."
Upon these and other facts found, the court dismissed the
petition; but, as no opinion was filed, the reasons for this
judgment do not appear.
Subsequently additional findings were made; but, as they are not
material, they are not here repeated.
From the judgment of the Court of Claims dismissing his
petition, petitioner applied for, and was allowed, an appeal to
this Court.
Page 171 U. S. 206
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
As the claimant in his petition relies only upon the patent of
February 18, 1879, No. 212,313, for an improvement in cartridges,
and as the proceedings in the former suit in the Court of Claims
were based in part at least upon this patent, it will not be
necessary to refer to any prior patents.
The only defense we are called upon to consider is that of
res adjudicata. As bearing upon this defense, the
following facts are pertinent:
April 19, 1883, claimant filed his petition in the Court of
Claims for a royalty upon cartridges and primers alleged by him to
have been manufactured by the United States under his patents
between February 18, 1879, and March 31, 1883.
June 1, 1885, this petition, after having been several times
amended, was dismissed, and findings of facts filed.
August 14, 1885, motions for new trial, amendment of findings,
and for reversal of judgment were filed by the claimant.
August 21, 1885, application for appeal was filed by claimant,
but such appeal does not appear to have been allowed.
December 14, 1885, motion for new trial was overruled by the
court, and the claimant was given leave to submit to the
consideration of the court certain amended findings, subject,
however, to objection of the defendants as to their allowance.
October 8, 1886, claimant's request for findings was filed under
order of the court, and on March 15, 1887, it was ordered to the
law docket.
The argument was deferred from time to time until November 16,
1891, when the motion of claimant to amend an order of court as to
evidence was allowed, subject to the objections of the defendants
on the argument.
The petition under consideration was filed June 11, 1888,
Page 171 U. S. 207
after the first petition had been dismissed by the Court of
Claims, and is based upon the patent issued February 18, 1879,
which was one of the patents involved in the first petition. A
claim is made in this petition for royalty upon cartridges
manufactured, in accordance with this patent, and used by the
United States for nearly six years prior to the filing of this
petition, but subsequent to the time of the filing of the first
petition.
In this connection, the court has found that the facts in the
case under consideration are the same as those in the prior case,
except as to the time since the beginning of the other action,
during which time, to-wit, from the beginning of the other action
to the beginning of this action, the government manufactured
cartridges of the same form and kind as those described in these
findings.
1. As the prior action was between the same parties, and was
based in part, at least, and principally, upon the same patent, it
would appear that the judgment of the court dismissing the petition
would operate as a complete estoppel to the present suit unless the
proceedings subsequent to the judgment in the former suit in some
way deprived that judgment of its force and effect as
res
adjudicata. 3 Robinson on Patents § 1017.
While the record of the former case was not sent up with the
transcript from the Court of Claims, it appears from the petition
in the case under consideration that, at the time the petition was
filed, there was a suit pending by the petitioner in the Court of
Claims in case No. 13,793 for compensation up to March 31, 1883,
and, in the findings, that the facts in both cases were the same
except as to the time covered by the petitions. The identity of the
two actions with respect to the parties, the subject matter, and
the facts sufficiently appear. As it further appears that the
petition in the former case was dismissed upon an opinion filed and
certain findings of fact, it will be presumed to have been
dismissed upon the merits,
Loudenback v. Collins, 4 Ohio
St. 251, and that such dismissal covered every question put in
issue by the pleadings, including the validity of the patent and
its use by the defendants.
Page 171 U. S. 208
But if there were any doubt with regard to this point, it would
be resolved by an inspection of the opinion of the court (which may
be examined for the purposes of identification), as it is published
in 20 Ct.Cl. 354, wherein it not only appears that the case was
considered and disposed of upon the merits, but the court concludes
its opinion (p. 370) in the following language:
"Upon our construction of the patent in issue, the government
cartridges do not infringe the claimant's; but, if we are in error
as to this, still the claimant cannot recover, as the essential
characteristics of his invention now found in the government
cartridge were developed by officers of the army in 1864 -- that
is, if the relative position of the vents and the wall of the
fulminate chamber is a material part of the claimant's patent, the
government has not infringed, this feature not appearing in its
cartridges; but if this position is not material, still the
claimant cannot recover, as the other characteristics of his
invention, found in the cartridge now used by the defendants, were
introduced by them prior to the use of the patent or the filing of
the application for it, and even prior to the application of
1865."
Whether the reasons given by the Court of Claims for the
dismissal of this petition are correct or not -- whether, indeed,
this judgment were right or wrong upon the facts presented -- is of
no importance here. If such judgment were based upon an erroneous
view of the claimant's patent, it was his duty to have promptly
taken an appeal to this Court, where the whole case would have been
reopened and the error of the Court of Claims, if such there was,
would have been rectified.
It is insisted by the claimant that in the former action, the
main contention arose upon the manufacture and use of what was
known as the "cup-anvil cartridge," together with a certain
reloading cartridge, which had been experimentally manufactured,
and that no claims for the "cup-anvil cartridge" or for the
reloading cartridge in that suit are in issue in the case at bar.
The suit, however, was upon the same patent, and it was found by
the Court of Claims to have been upon the same facts, and we think
the estoppel operates upon everything
Page 171 U. S. 209
which was, if not upon everything which might have been, put in
issue in the former case. The presumption is that the issues were
the same, and if they were in fact different, it was incumbent upon
the claimant to show that the prior case was decided upon questions
not involved herein. We have before us only a decision upon the
merits, and upon the same state of facts, of a claim identical with
this, and we perceive no reason why it should not operate as an
estoppel.
But there seems to be nothing upon which to base claimant's
argument that the issues were not the same. The findings show that
the manufacture of the reloading cartridge with the grooved anvil
disk, referred to in finding 6, commenced at the Frankfort Arsenal
in the month of July, 1879, and that from February, 1879, to March
31, 1883, being the period covered by the first suit, the United
States manufactured 3,866,352 reloading cartridges. We see nothing
to indicate that these reloading cartridges were manufactured
experimentally, or that the issue as to these cartridges was not
presented and decided in the former case. The claim in the present
suit is also for reloading cartridges.
But even if a somewhat different theory or state of facts were
developed upon the trial of the second case, the former judgment
would not operate the less as an estoppel, since the patentee
cannot bring suit against an infringer upon a certain state of
facts, and, after a dismissal of his action, bring another suit
against the same party upon the same state of facts, and recover
upon a different theory. The judgment in the first action is a
complete estoppel in favor of the successful party in a subsequent
action upon the same state of facts. Walker on Patents § 468;
Duboise v. Phil. Wilm. & Balt. Railroad, 5 Fish.Pat.
Cas. 208;
Bradley Mfg. Co. v. Eagle Mfg. Co., 57 F.
980.
2. It only remains to consider, then, whether any proceedings
taken in the Court of Claims since the dismissal of such petition
deprived its judgment of its character as an estoppel. A motion for
a new trial was made August 14, 1885, but, as this motion was
overruled in the following December, clearly this would not deprive
the judgment of its efficacy as a plea
Page 171 U. S. 210
in bar. Indeed it may well be doubted whether the pendency of a
motion for a new trial would interfere in any way with the
operation of the judgment as an estoppel.
Harris v.
Barnhart, 97 Cal. 546;
Chase v. Jefferson, 1 Houston
257;
Young v. Brehe, 19 Nev. 379.
3. It further appears that on August 21, 1885, an application
for an appeal was filed by the claimant, but as this appeal was
never allowed or perfected, and as it does not appear that a
transcript of the record was ever filed in this Court, it is
obvious that the authorities which hold that an appeal perfected to
a superior court vacates the judgment of the court below have no
application to this case.
We are therefore of opinion that the defense of
res
adjudicata is sustained, and the judgment of the Court of
Claims dismissing the petition is accordingly
Affirmed.
