Although in subsequent cases a party may have proved his facts,
the question, when here, must be decided on the evidence below in
the particular case.
Although one not a party may have contributed to the expenses of
a former suit by reason of business or indirect interest, if it is
not shown he had any right to participate in the conduct of the
case, he is not bound as a privy.
Where the circuit court and circuit court of appeals of the same
circuit agree on certain facts, this Court will not reverse the
finding in a case coming from that circuit notwithstanding the same
fact may not have been found by the courts of another circuit.
154 F. 65 affirmed; 157 F. 436 reversed.
The facts are stated in the opinion.
Page 215 U. S. 158
MR. JUSTICE HOLMES delivered the opinion of the Court.
These are two suits in equity, brought by the Rumford Chemical
Company for the infringement of a patent for baking powders; one,
No. 9, brought in the Third Circuit, New Jersey, against the
Hygienic Chemical Company, a corporation of that state; the other,
No. 121, brought in the Second Circuit, New York, against a New
York corporation of the same name. The two cases were tried on
substantially the same record and evidence, with the result that,
in New Jersey, the bill was dismissed by the circuit court of
appeals (154 F. 65), but in New York the bill was sustained (159 F.
436). Writs of certiorari were granted by this Court.
The defendants rested on the plaintiff's evidence, and the
question in both suits was whether a
prima facie case had
been made out. It did not appear that the defendants made or sold
baking powders as such, but the New Jersey company did make acid
phosphates for baking powders and other
Page 215 U. S. 159
purposes, and the New York company sold the great part of its
products. The plaintiff contended that this acid phosphate had the
characteristics described in its patent, and was made and sold for
use in baking powders, and that the manufacture and sale were an
infringement of its rights. A previous decision,
Rumford
Chemical Works v. New York Baking Powder Co., 134 F. 385,
establishing the patent, was relied upon as a test case by which
the defendants were bound; but, except the final decree, entered
after the beginning of the present suits, the record was not put
in. It would seem, from a late case, that the plaintiff was correct
in point of fact,
Provident Chemical Works v. Hygienic Chemical
Co., 170 F. 523, but the question here must be discussed, of
course, on the evidence before the court below. The question is
material as bearing upon the admissibility of the evidence of one
Clotworthy, since dead, given in the suit against the New York
Baking Powder Company, upon which the plaintiff relied.
Clotworthy was the president and general manager of the
Clotworthy Chemical Company, and was a manufacturer of baking
powder. He testified to the purchase from the Hygienic Company of
New York of a barrel of granular acid phosphate, shown to be
similar to that described in the plaintiff's patent. A bill from
the New Jersey company and a receipt from the New York company also
were produced and put in. The courts in both circuits rightly
regarded this as the most important, if not the only, evidence to
make out the infringement alleged. Therefore it was necessary that
the plaintiff should prove that the defendants were privy to the
New York Baking Powder Company's case.
To prove privity, Heller, the president of the defendant
companies, was called and asked as to his testimony on the former
occasion. He admitted that he then had testified that "we are
manufacturers of granulated acid phosphate, and are selling to the
trade in the same way as" the former defendants; also that he had
testified that "we have [undertaken to assist in bearing the
burdens of this defense, and have contributed to
Page 215 U. S. 160
the defense] financially and otherwise." By the natural
interpretation of the word in the connection in which it was used,
"we" embraced the New Jersey company, and fairly may be argued to
have meant both. Heller swore that these answers were true, but
with the qualification that he did not think that the New Jersey
corporation contributed financially, and that he did not remember
whether it did otherwise. All the courts agree that the privity of
the New Jersey corporation was not made out. Probably all, and at
least the Circuit Court of Appeals and the Circuit Court for the
Third Circuit (148 F. 862), agree that, if Clotworthy's testimony
is excluded, infringement is not proved. We should not revise this
finding of both courts on the facts, and therefore it follows that
the New Jersey decree must be affirmed. The evidence on both sides
is discussed in 148 F. 862.
It appears that the New York company contributed to the expenses
of the former case. But that fact alone is not enough to warrant a
different result. The agreement disclosed in 170 F. 523 was not
before the court. We may reject as extravagant the suggestion that
the contribution may have been made from charitable motives, and
assume that it was induced by reasons of business and indirect
interest; but it was not shown that, as between the present and
former defendants, either Hygienic Company had the right to
intermeddle in any way in the conduct of the case. The Hygienic
Companies would have been glad to see the Rumford patent declared
void, and were willing to pay something to that end. That was all,
and that did not make them privies, and therefore the Clotworthy
deposition was not admissible against them.
Litchfield v.
Goodnow, 123 U. S. 549,
123 U. S. 550.
Whether, if it had been admitted, infringement could have been
inferred from the sale of a barrel of granular acid phosphate to a
manufacturer of baking powder need not be considered. There was
other evidence in the case.
Decree in No. 9 affirmed.
Decree in No. 121 reversed.