1. A judgment of a court of competent jurisdiction upon a
question directly involved in one suit is conclusive as to that
question in another suit between the same parties, but to this
operation of the judgment it must appear either upon the face of
the record or be shown by extrinsic evidence that the precise
question was raised and determined in the former suit. If there be
any uncertainty on this head in the record, the whole subject
matter of the action will be at large and open to a new contention
unless this uncertainty be removed by extrinsic evidence showing
the precise point involved and determined. To apply the judgment
and give effect to the adjudication actually made when the record
leaves the matter in doubt, such evidence is admissible.
2. In an action at law for damages for the infringement of a
patent for an alleged new and useful improvement in the preparation
of leather, which patent contained two claims, one for the use of
fat liquor generally in the treatment of leather and the other for
a process of treating bark-tanned lamb or sheep skin by means of a
compound composed and applied in a particular manner, the
declaration alleged, as the infringement complained of, that the
defendants had made and used the invention and caused others to
make and use it without averring whether such infringement
consisted in the simple use of fat liquor in the treatment of
leather or in the use of the process specified.
Held that
the judgment recovered in the action does not estop the defendant
in a suit in equity by the same plaintiff for an injunction and an
accounting for gains and profits from contesting the validity of
the patent, it not appearing by the record, and not being shown by
extrinsic evidence, upon which claim the recovery was had. The
validity of the patent was not necessarily involved except with
respect to the claim which was the basis of the recovery; a patent
may be valid as to a single claim and invalid as to the others.
3. If, upon the face of a record, anything is left to conjecture
as to what was necessarily involved and decided, there is no
estoppel in it when pleaded and nothing conclusive in it when
offered as evidence.
MR. JUSTICE FIELD delivered the opinion of the Court.
This is a suit for an infringement of a patent to the
complainant for an alleged new and useful improvement in the
preparation of leather, and is similar in its general features to
the suit of the complainant against Dodge,
93 U. S. 93 U.S.
460. It is submitted upon substantially the same testimony, and
presents,
Page 94 U. S. 607
with one exception, the same questions for determination. That
exception relates to the operation, as an estoppel against setting
up the defenses here made, of a judgment recovered by the
complainant against the defendants in an action at law for the
infringement of the patent.
The bill of complaint sets forth the invention claimed, the
issue of a patent for the same, its surrender for alleged defective
and insufficient description of the invention, its reissue with an
amended specification, and the recovery of judgment against the
defendants for damages in an action at law for a violation of the
exclusive privileges secured by the patent.
The bill then alleges the subsequent manufacture, use, and sale
by the defendants, without the license of the patentee, of the
alleged invention and improvement, and prays that they may be
decreed to account for the gains and profits thus acquired by them,
and be enjoined from further infringement.
The answer admits the issue of the patent, its surrender and
reissue, and, as a defense to this suit, sets up in substance the
want of novelty in the invention, its use by the public for more
than two years prior to the application for the patent, and that
the reissue, so far as it differs from the original patent, is not
for the same invention. The answer also admits the recovery by the
complainant in the action at law of the judgment mentioned, but
denies that the same issues were involved or tried in that action
which are raised in this suit.
The action at law was brought in the Circuit Court of the United
States for the Northern District of New York in the ordinary form
of such actions for infringement of the privileges secured by a
patent. The defendants pleaded the general issue and set up, by
special notice under the act of Congress, the want of novelty in
the invention and its use by the public for more than two years
prior to the application for a patent. The plaintiff obtained a
verdict for damages, upon which the judgment mentioned was entered,
and this judgment, it is now insisted, estops the defendants in
this suit from insisting upon the want of novelty in the invention
patented and its prior use by the public, and also from insisting
upon any ground going to the validity of the patent which might
have been availed of as a defense in that action, and, of course,
upon the
Page 94 U. S. 608
want of identity in the invention covered by the reissue with
that of the original patent.
It is undoubtedly settled law that a judgment of a court of
competent jurisdiction, upon a question directly involved in one
suit, is conclusive as to that question in another suit between the
same parties. But to this operation of the judgment it must appear
either upon the face of the record or be shown by extrinsic
evidence that the precise question was raised and determined in the
former suit. If there be any uncertainty on this head in the record
-- as for example if it appear that several distinct matters may
have been litigated upon one or more of which the judgment may have
passed, without indicating which of them was thus litigated and
upon which the judgment was rendered -- the whole subject matter of
the action will be at large and open to a new contention unless
this uncertainty be removed by extrinsic evidence showing the
precise point involved and determined. To apply the judgment and
give effect to the adjudication actually made when the record
leaves the matter in doubt, such evidence is admissible.
Thus, in the case of the
Washington, Alexandria &
Georgetown Steam Packet Company v. Sickles, reported in the
24th of Howard, a verdict and judgment for the plaintiff in a prior
action against the same defendant on a declaration, containing a
special count upon a contract and the common counts, was held by
this Court not to be conclusive of the existence and validity of
the contract set forth in the special count, because the verdict
might have been rendered without reference to that count, and only
upon the common counts. Extrinsic evidence showing the fact to have
been otherwise was necessary to render the judgment an estoppel
upon those points.
When the same case was before this Court the second time,
Packet Company v.
Sickles, 5 Wall. 580, the general rule with respect
to the conclusiveness of a verdict and judgment in a former suit
between the same parties, when the judgment is used in pleading as
an estoppel or is relied upon as evidence, was stated to be
substantially this: that to render the judgment conclusive, it must
appear by the record of the prior suit that the particular matter
sought to be concluded was necessarily tried or determined -- that
is, that the verdict in the suit
Page 94 U. S. 609
could not have been rendered without deciding that matter, or it
must be shown by extrinsic evidence consistent with the record that
the verdict and judgment necessarily involved the consideration and
determination of the matter.
Tested by these views, the question presented by the plaintiff
in this case, upon the effect as evidence of the verdict and
judgment in the action at law, is of easy solution. The record of
that action does not disclose the nature of the infringement for
which damages were recovered. The declaration only avers that the
plaintiff was the original and first inventor of a new and useful
improvement in the preparation of leather and that he obtained a
patent for the same, and, on its surrender, a new patent, with an
amended specification, without describing with other particularity
the nature and operation of the invention, and alleges as the
infringement complained of that the defendants have made and used
the invention and have caused others to make and use it. The patent
contains two claims, one for the use of fat liquor generally in the
treatment of leather, and the other for a process of treating
bark-tanned lamb or sheepskin by means of a compound composed and
applied in a particular manner. Whether the infringement for which
the verdict and judgment passed consisted in the simple use of fat
liquor in the treatment of leather, or in the use of the process
specified, does not appear from the record. A recovery for an
infringement of one claim of the patent is not of itself conclusive
of an infringement of the other claim, and there was no extrinsic
evidence offered to remove the uncertainty upon the record; it is
left to conjecture what was in fact litigated and determined. The
verdict may have been for an infringement of the first claim; it
may have been for an infringement of the second; it may have been
for an infringement of both. The validity of the patent was not
necessarily involved, except with respect to the claim which was
the basis of the recovery. A patent may be valid as to a single
claim and not valid as to the others. The record wants, therefore,
that certainty which is essential to its operation as an estoppel,
and does not conclude the defendants from contesting the
infringement or the validity of the patent in this suit.
The record is not unlike a record in an action for money had
Page 94 U. S. 610
and received to the plaintiff's use. It would be impossible to
affirm from such a record, with certainty, for what moneys thus
received the action was brought, without extrinsic evidence showing
the fact; and, of course, without such evidence the verdict and
judgment would conclude nothing, except as to the amount of
indebtedness established.
According to Coke, an estoppel must "be certain to every
intent," and if upon the face of a record any thing is left to
conjecture as to what was necessarily involved and decided, there
is no estoppel in it when pleaded, and nothing conclusive in it
when offered as evidence.
See Aiken v. Peck, 22 Vt. 260,
and
Hooker v. Hubbard, 102 Mass. 245.
Decree affirmed.
MR. JUSTICE CLIFFORD dissented.