PATTEE
v.
MOLINE PLOW CO.
821
that the surrender was not good after recovery. See In re Stein, 16 N. B. R. 569; by Judge Blatchford, in which this proposition of inabilit;y to surrender the preference after recovery is maintained. Other cases might be cited to sustain this view of the case. The only modern authorities in conflict with them are In re Black, 17 N. B. H.. 399, and BU1'r v. Hopkins, 12 N. B. R. 211. From the evidence in this cause it appears that there is a conflict of testimony as to the fact of an offer to surrender the security creating the preference; but the respondents having retained this security, and having sought to establish their right to it by a suit in the circuit court of this distriet, it is manifest that in point of fact they never made such surrender up to the time of the announcement of the decision by the court; nor does it appear that such a surrender was ever made afterwards. For these reasons we deny the right to the respondents to prove their claim founded on the notes and book account, which was the consideration for the security, and we grant the prayer, etc., of the petitioner that the same shall be stricken off. Considering that this is a case of constructive fraud only, we think it right thu,t the whole costs 'should be equally divided between the petitioner and the respondent.
and others v.
MOLINE PLOW
Co. and others.
(Circuit Court, No D. lUinois, 1.
June 22, 1881.)
LETTERS PATENT-CULTIVATORS-INFRINGEMENT.
The tongueless, straddle-row cultivator, which has an arched or bent axle, with wheels revolving upon the journals at the end of the axle, and plows attached to the axle by a joint allowing the plows to swing vertically and latterally, the axle being jointed in the middle of the arch by a torsion joint, which is prevented by lugs from turning only a certain distance, does not infringe patents issued, respectively, to Schroeder, Eichholtz, Norton, Pattee, and Poling. 2, (JOMBINATIONS OF OLD PARTS,
A pa'ent for the combination of old parts is not infringed by a different combination of the same parts to produce the same result.
In Equity. A. McCallum, for complainants. West cf: Bond, for defendants. BLODGETT, D. J. The bill in this case alleges the issue of the following patents by the United States patent-office:
822
FEDERAL REPORTER.
(1) Patent issued to J. Schroeder, September 24, 1867; reissued to complairiants, February 6, 1877. (2) Patent issued to M. Eicllholtz, .April 6, 1869; reissued to complainants, June 12, 1877. (3) Patent issued to C. P. Norton, October 18, 1870; reissued to 1. P. Pillsbury, August 26, 1873. (4) Patent issued to James H. ·Pattee, March 5, 1872; reissued to complainants, October 6, 1874. (5) Patent issued to T. Poling, August 13, 1872. -All of which patents were for improvements in cultivators, and have come by assignment into the ownership and control of the complainants. It is further charged that the defendants, disregarding the exclusive right secured by the aforesaid patents to the complainants, have made and sold, within this district, cultivators according to ,and in which are embodied devices and inventions covered by the said patents, as the same now stand reissued. The bill contains the usual prayer for an injunction, and an accounting for profits and damages. The defendants, by their answer, deny the validity of the complainants' several patentsFirst, for want of novelty; second, because the reissued patents are for different inventions than those Shown by the original specifications and drawings; third, they deny that the cultivators made by them infringe all or any of the complainants' patents.
It appears from the proof, as part of the history of the patents in question, that James H. Pattee, one of the complainants, devised what he considered a valuable improvement in cultivators, involving what he deemed a radical innovation on the then mode of constructing this implement, which was to make a two-horse straddle-row cultivator without a tongue or pole-in other words, a tongueless cultivator. The Pattee model, which is in evidence, shows the general idea of his invention-a cultivator, with the ordinary device of an arched axle for straddling the rows of corn or other plants to be tilled; the axle, jointed near the horizontal arms which form the journals for the wheels, and supported on wheels, with the plow's beam hinged to the axle by joints which allow them to oscillate or swing vertically and laterally. For this device he obtained the patent of March 5, 1872, which was subsequently reissued on the sixth of October, 1874. After this patent was obtained the complainants procured assignments of the Schroeder, Eichholtz, and Norton patents,-all of which were cultivators, provided with tongues as an element of their organism,-and secured reissues thereof, covering certain features which are assumed to be essential to the tongueless
PATTEE V. MOLINE PLOW CO.
823
machine, and they have also obtained an assignment of the Poling patent, which is a few months later in date than the Pattee patent. What may be called the Pattee cultivator has two characteristic features(1) It operates without a tongue 01' pole, the draft animal!; being attached in such a way as that each animal, within certain limits, draws his own plow, the draft being distributed to each animal by means of the joints in the axle; (2) it has a jointed axle or coupling yoke, by which the two plows are held together and made to operate at a certain distance apart.
It seems, for the purposes of this case, to be conceded that, in order to make this class of cultivators practical, there must be some provision for the flexion of the axle, so that each horse shall move its own plow, or the plow to which it is directly attached, independently of the other, to a limited extent. That is,,if the, two plows are rigidly coupled or connected together, and one horse moves faster than the other, or deflects from the line of draft, the machine will have a sidethrow it upon or too close to the rows of ways motion, which plants it is intended to cultivate, or require extra effort on the part of the plowman to keep it in line. A joint of some kind, then, which shall operate to prev'ent the sideways action spoken of, and also divide the draft between the horses, is deemed a special desideratum in this class of cultivators, and one of their chief merits. The flexion is obtained in complainants' machine, under the Pattee patent, by means of two joints, one at each end of the axle, A, as it is termed in the specification. The joints are made by means of the side plates, A and B, and a spindle, as sl1own. From these side plates stand the horizontal arms which form the journals for the supporting wheels; the plow-beams being attached to the axle just outside the joints-that is, between the joint and inner end of the hub. These joints allow a free backward and forward motion, and the combined parts make the arched jointed axle described. The principal defendant in this case, the Moline Plow Company,the other defendants being officers of the corporation, and only charged with violating these patents by their action 8S such officers, -makes a tongueless, straddle-row cultivator, which has an or bent axle, with wheels revolving upon the journals at the ends of the axle, and plows attached to the axle by a joint allowing the plows to swing vertically and laterally, and the axle jointed in the middle of the arch by a torsion joint, which is prevented by lugs from tnrpiQg only a certain distance; but the joint is in the mid-
824
'FEDERAL REPORTER.
of the axle, instead of having two joints at the spring of the arch, as shown in the Pattee patent. It is insisted, on the part of the complainants, that it is by the use of this jointed axle,-that is, the axle jointed in the middle,-and in the peculiar two-way joint by which the defendants' plow-beams are attached to the axle so as to secure the requisite lateral and vertical motion to the plows, that certain claims in all these patents owned by the complainants are infringed. In other words, the complainants insist that the defendants' joint in the middle of their axle is but the equivalent of the two side joints in the Pattee axle, and is the same joint which is shown in the Pattee, and at least anticipated in the devices of Schroeder, Eichholtz, and Norton. The Schroeder machine was a straddle-row cultivator with a frame, consisting of wheels, axle, and tongue, but with a peculiar device for securing the plows to the frame by means of what he terms an "arched beamyoke," which was bolted or pivoted at its center to the tongue in such a manner as that "either end of said beam-yoke may be advanced or receded with its respective plow without disturbing the parallelism of the plow-beams," which are hinged or jointed" to the yoke in such a manner as to permit of their being oscillated laterally or vertically, and yet to sustain the plows in their upright positions without rear connections. The plows are attached to this vibrating bar or "arched beam-yoke" by a two-way joint,-this two-way joint allowing a vertical and lateral motion to the plow,-and at the same time the joint is so constructed as to hold the plows in an upright position. The arched beam-yoke consists of the centrally vibrating beam, or evener, and the pendant side arms which drop from the end of the evener. The joint by which the beams are attached to the pendant consists of two flat pieces of metal, one bolted to the top and the other to the under side of the end of the plow-beam, and bent so as to come together forward of the end of the beam. A bifurcated or split plate is made to pass on each side of the pendant, and is attached thereto by a bolt fastened through both parts of the split plate and the pendant, by which means the vertical movement of the joint is obtained. This split plate is carried back and flattened so as to pass between the two plates which embrace the end of the plow-beams, and attached thereto by a bolt, so as to secure the lateral movement. The plows are drawn by means of a forked or two-pronged draft-bar, one limb of which is attached to the lower end of the pendent part of the yoke, and the other either to the upper end of the pendant or to
825
the end of the evener, and the whiffletrees are attached to the forward end of these two bars, where they converge into a hook, or other device, for attaching them. The claims of this patent, as reissued, which the defendant is alleged to have infringed, are the first, second, third, and fifth, which are as follows: "(1) Two plow-beams, B B, connected together by an elevated beam-yoke, A, so that either may operate in advance of the other, while both are drawn forward in the line of progression by draft animals attached to each side of the machine, so that each animal draws in a manner its adjacent plow, the attachment of the plow-beams to said yoke being by joints which permit the moving of the beams freely and independently in a lateral direction, combined and operating substantially as described, and for the purpose specified. "(2) Two plow-beams, B B, connected together by an elevated beam-yoke, A, so that either may operate in advance of the other, while both are drawn forward in the line of progression by draft animals attached to either side of the machine, so that each animal draws in a manner its adjacent plow, the attachment of the plow-beams to said yoke being by joints which sustain the plows in an upright working position without rear connections or other supmoved or oscillated freely in a lateral direcport, and permit of their tion, combined and operated substantially as described, and for the purposes specified. "(3) Two plow-beams, B B, connected together by an elevated beam-yoke, A, so that either may operate in advance of the other, while both are drawn forward in the line of progression by draft animals attached to each side of the machine, so that each animal draws in a manner its adjacent plow, the attachment of the plow-beams to said yoke being by joints which sustain the plows in an upright working position without rear connections or other support, and permit of their being moved or oscillated freely in a lateral or vertical direction. combined and operating substantially as described, and for the purpose specified. "(5) 'rhe draft-bars, F F, hinged to the beam-yoke, A, and combined to operate with said beam-yoke and plOW-beams, B B, substantially as described, and for the purpose specified."
It WIll be seen that the first claim covers the two plow-beams, connected together by a beam-yoke, so arranged that one may operate in advance of the other, and the plow-beams being attached to the yoke by joints which permit each beam to move freely in a lateral direction, combined and operated substantially as described. In other words, as I understand and construe this claim, it is for a combination of these plow· beams; the particular and special kind of beamyoke; and the joints by which the plow-beams are hinged to the yoke, so as to secure the lateral motion. The second claim is for precisely the same combination of parts, with the additional statement that the joints by which the plow-beams are attached to the yoke are to sup-
826
'EDERAL REPORTER.
port the plows in an upright working position, ana permit of their being oscillated in a lateral direction; while the third claim is for the same combination of parts, with the additional statement that the joints attaching the plow-beams to the yoke must permit the beams to be moved or oscillated freely in a lateral or vertical (Erection. The fifth claim is for tile combination of draft-bars, connected with the beam-yoke and plow-beams as described. By the first claim he covers as new the combination of certain parts as shown, and the joint allowing a lateral motion to the plows; and by the· second and third claims he covers the other functions of the same joint; not the joint as such, on the assumption that no such joint was ever before made, but the result or operation of the joint. By the second claim, that the joint sustains the plows in an upright position; and in the third claim, that it allows the plow to move laterally or vertically. This joint, as shown in his mechanism, is simply a two-way joint, and when used in this combination, as described, permits all these movements or functions as a necessary part of its action in the mechanism, and also holds the plow in an upright position, and I cannot see how these claims for the result or functions of the joint can be deemed valid. It is the mechanism which is the subject-matter of the patent, and not the result of the mechanism. The Eichholtz patent is for a tongued cultivator, Pluts of which are so arranged and combined as to dispense with wheels, and where each draft animal was attached to his own plow. It is not a bngueless cultivator, as will be seen, but consists of a beam-yoke, coupling the plow-beams together and to which the plow-beams are attached by a peculiar joint described, which allows the plows to be operated vertically and laterally; but they could not be dropped below a eel'· tain line by reason of the extension of the heel of the joint, as I call it, backwards from the pivot. The claims in this reissue patent, which are brought in question in this case, are: "(1) The combination of two plow-beams and the beam-yoke, connected together by joint pieces so that the yoke sustains the beams in upright working position without their being connected together ill rear, and is itself supported in an elevated position. the beams having also lateral and vertical motion, SUbstantially as and for the purpose specified."
-Or, as I understand it, this claim is for a combination of this special kind of beam-yoke, so arranged as to support the plow::; III a vertical position upon the yoke.
827
"(2) Two plow-beams, B B', connected together by an elevated beam-yoke, A, so that either may operate in advance of the other while both are drawn forward in the line of progression, the attachment of the plow-beams to said yoke being by joints which sustain the plows in an upright working position without rear connections or other support, and permit of their being freely moved independently in a lateral direction, and in a limited vertical direction, permitting the necessary vertical movement of the plows and sustaining the beam-yoke in an elevated position, combined and operating substantially as and for the purpose specified."
It seems to me that the only material feature in this combination, which is not found in the Schroeder patent, is the peculiar joint by which the plow-beams are attached to the yoke so that the yoke sustains the plows in an upright position, and permits of a limited lateral and vertical motion of the beams. It may be remarked, and that is all I propose to say in reference to this joint, that it is but another form of a two-way joint. 'fhe pivot upon the yoke allows of a lateral motion to a limited extent j the peculiar joint by which the plow-beam is attached to the plate pivoted upon the yoke allows a limited motion upwards and downwards. The machine covered by the Norton patent is a frame mounted on runners instead of wheels, and the frame is so jointed as to permit one plow to advance ahead of the other, and the plow-beams to be vertically and laterally oscillated by the peculiar mechanism shown. This sled,as it may be called, is arranged with cross-pieces, connected by runners and a tongue in such a manner as to produce the movements of an ordinary parallel rule, by means of which one plow may be drawn slightly ahead of the other, and the irregularities of the working of the ,team compensated for, to a certain extent, by the mechanism shown. The plow-beams are attached to one of the forward vibrating-bars, in connection with this parallel-rule motion, so as to allow of a limited lateral and vertical motion, but are held upright by a peculiar arrangement of the joints. The claim in this reissued patent is for.. The main frame, A B, and runners, E, arranged relatively to each other so that either side of the main frame, together with its runner, lUay be advanced, and either plow-beam vertically or laterally oscillated without distUJ;bing the parallelism ot the runners with each other, or with the line of progression, substantially as described, and for the purposes specified."
It will be noticed that running all through these reissued claims is
substantially the same idea-the same leading thought: That each plow is to be advanced in the line of progression without disturbing the parallelism of the beams, and without materially disturbing the
828
action of the other plow, within the limited scope of this allowable motion. The peculiarity of the Pattee invention I have alroady sufficiently described. The claims which it is insisted the defendant infringes are: "(1) The combination in a walking straddle-row cultivator of the following instrumentalities, viz.: two wheels, D D, axle, A, and two plow-beams, K K, each beam carrying a handle and one or more shovels or plows. and independently hinged to the axle, so as to be retained in working position without rear connection or support, and moved freely in a lateral, vertical, and horizontal direction, substantially as and for the purposes specified. "(4) 'fhe combination of the plow-beams, K K, axle. A, and wheels, D D, the latter being hinged or pivoted to the axle to permit of one side moving in ad vance of the other, substantially as described, and for the purposes specified."
The Poling patent describes a tongueless straddle-row cultivator, the forward ends of the plow-beams of which run upon caster wheels; and the plow-beams are held together by an arched or elevated beam-yoke, jointed in the middle. In the Poling patent the casters are attached to the axle, as he calls it. and the plow-beams are also attached to the axle by a joint in a way which admits of lateral motion only. They are rigidly attached, so far as any vertical motion independent of the yoke or axle is concerned, but the vertical motion of the plows is obtained by the joint in the axle. The plowbeams are attached to the yoke by a joint which permits of their free lateral movement, but the needful vertical motion is obtained by means of the joint in the middle of the yoke or axle. I have thus described and discussed briefly each of the complainants' patents. The next inquiry is as to the novelty of those devices, and whether the defendant infringes the same. From the proof in this case it is quite clear to me that Pattee was not the first to conceive and embody in a working machine the idea of a tongueless straddle-row cultivator. The first machinA shown in the proof, which embodies this idea, is that patented by Isaac Constant, in November, 1851. It is a tongueless straddle-row cultivator, with all the elements for a working machine of description, and so arranged as to be what may be called in this art self-sustaining; that is, it will stand upon its own supports. This was also done by Arnton Smith, in January, 1855; by Whiteley, in 1860 to 1865; by E. W. Vangundy, in February, 1864; by Pratt, in October, 1864; and by Adam Young, in November, 1866. All these show cultivators constructed without a tongue, with two plow-beams held together by
82»
He shows, in his plans, the two plow-beams held together by a coupling-rod, as he calls it, and to which the plows are jointed by swivel-joints. For the purpose of holding his plows in an upright position he has a rear connection, or shackle-bar, as it is termed in the complainants' device,-shackling the two plows together. Here, then, we have in Smith's device two plows jointed to a beam-yoke in such a manner as to allow of a lateral and vertical motion to each plow, independently of the other, and each animal draws his own plow. This is the first beam-yoke shown in the proofs in this case; but the disclaimer by Smith in his specification intimates certainly that other inventors or manufacturers had adopted the coupling-rod idea of an arched bp.amor beam· yoke prior to him. Nor was yoke new to Schroeder, who is the first and oldest of the complainants' patentees. An arched beam-yoke is shown in the Constant patent of 1851. This beam-yoke is arched so as to pass over the plants to be cultivated, and yet operates to hold the two plow-heams together. The same idea is also shown in the patents of Saville,
830
Vangundy, and Pratt, and the model of Whiteley. I read frem the specifications of Vangundy's patent of 1864 this extract: "The central portion of the front bar, D, (that is, the arched coupling-bar,) is bent upwards so as to pass over the tops of the rows of growing cora or other grain without injuring the crop, and the rear bar, E, is forked for the same purpose." Nor was the idea of a jointed beam-yoke or axle which would allow one plow to advance to a limited extent without the other new to Schroeder, Eichholtz, Norton, Pattee, or Poling. Constant made provision for it by the pivoting of his beam-yoke to the beam, as shown in his model, thereby securing the evener motion of Schroeder and Eichholtz, or parallel-rule motion of Norton and Pattee. Vangundy made express provision for it in his specifications, as follows: "As the retaining pins, c c C c, act as pivots, the longitudinal playing of the ends of the bar, D, upon the pins, b b, permit, to a certain degree, the independent movement of the two draught-beams in parallel lines, whilst a similar play of. the ends of the bars E and F, upon their retaining pins, C c, within the slots in the share-beams, B B', permit the end of either draught-beam to be elevated or depressed independent of the other." So that here is express provision for the independent action of each plow to a certain extent, and provision also for the lateral and vertical movement which is shown in the patents of the complainants. Pratt says, in his specifications: "The invention consists in connecting together two plow-beams, arranged in such a manner that each beam will have an independent movement, or one to a certain extent independent of the other, whereby the implement is placed more under the control of the operator than usual, and managed with less labor and with less fatigue to the team." .. One draught animal is attached to each beam, A, and it will be seen from the above description that each beam, A, in consequence of being connected by the cross-bars, D D, as shown, is allowed a certain independent movement longitudinally, and may therefore be managed and operated with facility in case of meeting with obstructions, and the implement is not so liable to be strained or racked as when thli rigid frames are used, nor the team so much fatigued." .. In plowing or cultivating corn I remove the bars, D D, and put on curved metal bars, H, as shown in figure 3." Here we have, in the Pratt device, all of the substantial idea shown in Schroeder; that is, the connection of the plow-beams by a
*
PATTEE V. MOLINE PLOW 00.
831
beam-yoke so that they are held together, and the beam-yoke is arched so as to pass over the .rows of plants, and each plow moves to a certain extent independently of the other, by means of the joints at the. point where the yoke is attached to the plow-beams. Indeed,' it seems to me that Schroeder's "arched beam-yoke" and Pattee's arched and jointed axle are fully anticipated in form of construct,ion, function, and mode of operation by Pratt's "curved metal bar, H." And it is also noticeable that Pratt claims these characteristics as the patentable features of his devices, while they were not originally claimed (or at least allowed to them) by Schroeder, Eichholtz, Norton, or Pattee. In 1865 W. S. Weir attached the plow-beams of his cultivator to an arched axle, as shown by the proofs, by a two-way joint, which held the plows in an upright working position without rear connections, and permitted all ·the lateral and vertical motions claimed in the Schroeder patent; while Adam Young, in November, 1866, and George E. Owens, in August, 1871, show the two plow-beams of a straddle-row cultivator connected together by an' arched yoke with a joint in the middle, and for substantially the same purpose as used in Poling's device. Young says in his specifications: "In order to arrange the connections between the plows so as to pass over the tops of corn leaves, after the latter have considerably advanced in growth, as is always the case with the late cir final plowing, the connecting beams between the two plows are constructed in a peculiar manner by taking them in a vertical direction above each beam, and conducting them horizontally across towards the other plow. 'rhere are two of these bent beams attached to each beam, and to each other in the horizontal part of them. so as to form a pair. Each pair of these beams is coupled together by a peculiar clamp arrangement, which admits of a ready adjustment of the parts to accommodate the width of the rows as before recited. * * * "The sockets. a, are 'permitted to turn easily around their vertical axis so as to one of the plows to be drawn ahead of the other without wrenching or straining any of the parts. and the beam'l, C C are pivoted to the Bockets. a, or the handle, B', so as to allow the requisite lateral motion of these parts." t ,
Owens, in 1871, describes a tongueless straddl -row cultivator with an arched beam-yoke jointed in the center by a ring, and he says that this arrangement permits one section or division of the implement to be eight to twelve inches in advance of the other. There is then shown, by the proof in this case, that at times long antedating all of the complainants' patents all of the idea,s or peculiarities of the complainants' se"era;! machines-the arched yoke of Schroeder
882
FEDERAL REPORTEI>.
and Eichholtz and the two-way joints-were adopted and are older than the date of either the Schroeder or Eichholtz patents. The idea of the jointed axle of Pattee, by which the rigidity of the cultivator frame is avoided, and each draught animal operates his own plow to a certain extent independent of the other, is older in the art than either of the inventions covered by the complainants' patents. Not that, in either of these preceding machines, there is shown just the same kind of joint, structurally considered, as that shown in the Pattee patent, or an arched beam-yoke precisely like that of Schroe. der; but the idea and function of Pattee's axle and Schroeder's beam-yoke seem to have been anticipated and worked out, in prac· tical machines, by the several inventors from whose specifications I have so fully quoted. I, perhaps, should not leave this branch of the case without referring to the evidence touching the Whiteley cultivator, which appears in this record. This cultivator-a model of which is introduced in evidence-was never patented, but the proof shows that it was con· structed and in use in the vicinity of Springfield, Ohio, from 1860 or 1861 up to 1873 or 1874, and the evidence shows that some hundreds of them were constructed and put to use in that locality, and that it was a popular and useful machine. It is true there is some dispute in the record as to the precise time in which Whiteley com· pleted and manufactured his machines i but I think the clear preponderance is in favor of the defendants' assumption that these machines were made as early as 1860, and that Whiteley continued the manufacture of them for several years thereafter. This Whiteley machine certainly embodies the main ideas that are developed-perhaps with more mechanical skill, but not inventive genius-in the later devices of Pattee and Poling. The time when the Whiteley machines were first made and introduced is fixed by the testimony of the witnesses as during the war, and it is hardly possible that a person could be mistaken as to a fact which occurred during a historical period of such impressive interest as our late civil war. Arched and jointed beam-yokes, then, being old, and two-way joints being old, the complainants' inventors could have patents only for their special devices and combinations. These patents may be valid as shown. That is, the Schroeder patent may be a valid pat· ent for the combination of the peculiar parts which Schroeder shows in his patent and claims as his peculiar invention-his peculiar arched beam-yoke or evener, his peculiar joint by which he sustains the plow, may be valid, and the combination of them, to make such
833
a me,;1Jallitim as he shows, may be valid. He does not claim, in fact, to have invented a beam-yoke, nor a two-way joint; he does not assert that he is the first to have made a joint of this character, but simply puts it into his combination. So, too, an arched beam-yoke, jointed in the middle, as shown in Poling's patent, must be confined to his special joint; and this was evidently the view of the commissioner of patents. Poling describes his device,-his arched axle,and then is allowed one claim, as follows: " Having thus described my invention, I claim as new, and desire to secure by letters patent, the bars, A, constructed substantially as herein shown and described, and pivoted to each other at their inner ends, to adapt them tc receive the plow-beams and draft, as and for the purpose set forth." He describes the peculiar kind of axle. He describes how he secures the peculiar kind of joints shown-by cutting the axle in twc and pivoting the parts together. It is true this is a torsion joint, the same as is used by the defendant, but it is a peculiar kind of torsion joint; and inasmuch as torsion joints were not new, and the idea of a joint in the middle of the axle hd been shown by Owens, 1 think Poling must be limited to his peculiar joint. He cannot claim the idea of a joint in the middle of the arch or axle, because that had been done by preceding inventors. The defendant's arched yoke is a peculiar device by itself. It ie an arched axle with a hinge in the center. It differs not essentially, perhaps, in its mode of operation, from Poling's, but it has another kind of joint-a different joint from Poling's; not but what it has the same function, but Poling had no right, in the state of the art, to cover the function, or to cover every joint at that place. He was not the first to joint the arch or axle of a cultivator in the middle for the purpose of obtaining the result which he obtained. The field was open to the defendant to make another kind of joint in the same place which might accomplish the same result as Poling's without infringement. I therefore come to the conclusion that the defendant, in its combination of parts to produce its cultivator, does not infringe upon any of the special devices which are shown and 'covered by the complainants' patents. It is true that the defendant has an arched axle, but arched axles were old, older than Schroeder's or any of the complainants' patents. It is true that defendant's axle is jointed in the center, but an arched axle or beam-yoke, jointed in the center, was older than Poling's. It is true that defendant uses It twows,y joint by which lateral and vertical motion of the plow-beam :iii! v.9,no.14-53
834:
secured, and the plow is held in an upright position, but this had been done by Weir and other inventors long before any of the complainants' patents were issued. The patents of Schroeder, Eichholtz, Norton, Pattee, and Poling all seem to me, from the proof, to be mere combinations of old parts, and, as I have said, may be valid as such combinations; but the defendant had the same right to combine other, or the same parts, so long as it did not use the same combination shown in ants' patents, which I find it does not. The bill is dismissed for want of equity.
THE TUBAL CAIN.
(DiBtrict Gourt, S. D. REs ADJUDICA.TA-STATE
York.
November 17,1881.)
COURTS-EsTOPPEL-SUPPLEMEKTAL ANSWER-An-
MIUALTy-EvIDENCE-STAY OF PROCEEDINGS.
Where the substantia] issue in tWo actions is the same, although the particular claims or causes of action bediiIerent, a trial and judgment upon the merits in the one action may be pleaded or given in evidence as an estoppel upon the same matter in the other. 'rhe rule is the same, though the one action be in admiralty and the other in a state court or a foreign jurisdiction. Where the owners of the brig T. C. chartered her to W. & Co. to proceed to Turk's island for a cargo of salt, to be furnished with quick dispatch, and the brig went there, and, after waiting eight days for a cargo, and none being furnished, returned to New York, refusing to wait longer or to go elsewhere for a cargo, as desired by W. &; Co.; and the owners thereupon sued the charterers, in a state court for breach of the contract in not furnishing the cargo as agreed, and the charterers then sued the owners by libel in this court for breach of the contract in not waiting longer or going elsewhere for a cargo as desired, and the defendants in each case 8ct up a breach of the charter-party by the opposite side: held, that the substantial issue in each action was the same, and that a judgment in favor of the plaintiffs, after a trial by jury in the state court, might be set up as an estoppel in favor of the defendants in the action pending in this court; that leave should be given to seL up the recovery of such judgment by supplemental answer; and, as there was an appeal pending from the judgment in the state court, the cause, on being reached for trial in this court, should be stayed until the determination of the appeal.
In Admiralty. &; Hobbs, for libellants. Shandy, for respondents. BROWN, D. J. A motion is made for leave to tile a supplemental answer setting up a judgment recently recovered in a state court, in another action between the same parties.
Beebe, Wilcox
Hill,
THE TUBAL CAIN.'
885
On July 11, 1879, the respondents, who are owners of the brig Cain, Tnrk's island to New York, chartered her to the libellants for a voyage to carry a cargo of salt, in bulk, at the price of seven cents per bushel, and, the libellants contracted to furnish such cargo with quick dispatch on her readiness to receive it, and to pay at the rate of $40 per day for any detention of the vessel through their fault. The'Tubal Cain proceeded to Turk's island pursuant to the terms of the charter-party:, and arrived there on September 8, 1879, but no cargo could be at once procured. After waiting until the sixteenth of September, and failing to obtain any cargo, she returned.to New: York. Before leaving Turk's island her master was requested to go to Inagua, where it was stated that salt could be procured, but he declined to do so. On the sixteenth of October the owners, the respondents, commenced an action in the supreme court of this state to recover $1,358.84, their damages against the ,present libellants for an allegedbreaeh of the charter-party. in not furnishing a cargo of salt as agreed. The libellants appeared in that action on October 18th, and upon the same day filed tl1eir libel in this court to recover $1,000 for their damages against these respondents for their alleged breach of the charter-party in not ·· waiting a reasonable time at Turks island, or procUling a cargo, or going to Inagua for a cargo, as requested." The respondents in their answer, as a defence in this cause, set up the same breach of the oharter-party by the libellants whioh they alleged in their complaint in the state court, and also pleaded in abatement the pendency of the suit in that court. On December 27,1879, the libellants, as defendants in the suit in the state court, put in their answel', alleging that the master of the Tubal Cain, though requested, "refused to await a reasonable and customary time for the said cargo, or to procure a cargo of salt, or to proceed to Inagua," by which it was alleged that the owners were" guilty of a breach oithe terms of the charter-party, and not entitled to the compensation named." In May, 1881, 'a trial of the suit in the state court was had before the court and a jury, and a verdict rendered for the owners for $970.41 damages, for which sum and costs judgment was duly entered in their favor on May 28, 1881. The respondents now ask leave to set up by supplemental answer the recovery of this jUdgment as a bar to the further prosecution of this action. It is admitted that an appeal from this judgment has been taken, and is still pending. This motion is made upon the call of the cause on the day calendar; anll, along with the proposed supplemental answer, ad uly-authenticated copy of the judgment roll in the other suit is also presented to the court, and a decision requested upon the merits of the proposed plea as a virtual clisposition of this case.
From the facts above stated it is apparent that the claims of the respective parties upon the pleadings in the two suits are mutually exclusive of each other. The claim of each party in the two actions is based solely upon an alleged entire breach of the charter-party by the other, and an entire failure in its performance. Neither party could be defeated in either action except uponproofof facts showing
886
FEDERAL REPOBTEB.
such a breach of contract on its part as must legally preclude it from any recovery in the other action. The sole ultimate question in each case is, which party was in fault for the vessel's return without a cargo? Thus, althongh the causes of action in the two suits are different, the fundamental question at issue in both is the same. In each suit each party alleges the other to be in fault in the same identical particulars which he sets up in the other suit; and in each the breach of contract alleged is not a partial breach merely, from which some incidental claim arises, but an entire failure of performance, such as necessarily excludes whichever party is guilty of such a. failure from all claim under the contract. The claim for damages which the libellants present by this suit might have been made in the action in the state court, under sections 500-502 of the New York Code, as a "counter-claim" growing out of the same transaction, without any substantial change in the answer which they actually interpose in that action. They did not make any such counter-claim for damages in that action, but they set up, as a defence to the plaintiff's demand, the same identical matters upon which their present claim is founded. The issues, therefore, in both actions are substantially the same. The issue has been tried upon the merits in the action in the state court, a verdict recorded thereon in favor of the respondents, and a judgment entered upon the verdict. It is not claimed that that issue, and all the matters involved in .it, were not fully and fairly presented and tried in that action. Such a judgment properly pleaded is, by all the authorities, held to be an estoppel against all further controversy in any other action between the same parties upon the same subject. matter, whether the particular cause of action be the same or not. "A fact which has been directly tried and decided by a court of competent jurisdiction cannot be again contested between the same parties in the same or any other court." Hopkins v. Lee, 6 Wheat. 109.
Its operation is not as a former judgment recovered upon the same cause of action, for the cause of action is not the same; but as an estoppel of record by an adjudication of the same identical matter once heard and determined between the parties. Russell v. Place, 94 U. S. 606; Beloit v. Morgan, 7 Wall. 619; Aurora City v. West, Id. 82; Gardner v. Buckbee, 3 Cow. 120; Bouchard v. Dias, 1 Cams. 71; Hopkins v. Lee, 6 Wheat. 109; Bigelow, Estoppel, (2d Ed.) 36,45; Flanagin v. Thompson, 9 FED. REP. 177. This case does not present the question which has given rise to conflicting decisions in the different state courts, viz., whether the
837
same estoppel should be held to apply where the same claim or defence was legally involved in the prior action, and might have been presented, but was not, in fact, presented or considered. In such cases the courts of this state hold that if such matter be available in the former suit, and the issue by its nature involves the whole transaction, the defeated party is equally bound, whether he avails himself of it or not. Dunham v. Bower, 77 N. Y. 76; Schwinger v. Raymond, 83 N. Y. 192. Other cases hold that where the causes of action are not the same,though growing out of the same transaction, the estoppel applies only to such issues as were actually raised and controverted, or to those ultimate facts upon which the verdict and judg:'lent were predicated; and such has recently been the decision of the United supreme court. Cromwell v. County of Sac, 94 U. S. 351; Davis v. Brown, 94 U. :::;. 423; Smith v. Town of Ontario, 4 FED. REP. 386; Flanagin v. Thompson, 9 FED. REP. 177; Beseque v. Beyers, (Wis.) Chic. Leg. N. Nov. 5, 1881, p. 60. But here the substantial issue is the same in both cases. Each party urges the same identical facts in his own favor in both actious,in the one action as a ground of claim for damages; in the other action as a defence against the claim of the other party. In such cases there is no conflict in the decisions. In the last of the above cases, cited by the libellants' counsel, the effect of the judgment as an estoppel in such a case is conceded. If the judgment had, therefore, been recovered prior tp the filing of the libel and pleaded as a defence, it would, when proved, have beeu conclusive as au estoppel against the libellant's claim in this case. It does not matter that the former judgment was recovered in a different jl1:risdiction,-a sis. tel' state, or even in a foreign country; and a judgment of a state court is binding upon subsequent proceedings in admiralty in reference to the same subject-matier. Good1'ich v. The City, 5 Wall. 566; Taylor v. The Royal Saxon, 1 Wall. Jr. 333. In the answer here the plea in abatement of the other suit pending was of no avail, as that suit was in a foreign jurisdiction. Wadleigh v. Veazie, 3 Sumn. 165; Loring v. Ma1'sh, 2 Cliff. 322; Mitchell v. Bunch,2 Paige, 606; Salmon v. Wootton, 9 Dana, 422. But in such cases, whichever first ripens into judgment becomes effective, and may be then allowed to be set up as against the further prosecution of the other action. Child v. Eureka Co. 45 N. H. 547. The proper mode of doing this is by supplemental answer or plea puis darrein continuance. Steph. PI. 611; Hendricks v. Decker, 35 Bal'b. (N. Y.)
838
REPORTER.
298; Butler v. Suffolk Glass Co. 126 Mass. 512; Drought v. Curtiss,
8 How. (N. Y.) 56. As there is no claim that the trial in the state court was not a full and fair trial, leave to file the supplemental answer should be granted, and the judgment roll, when offered in evidence, would be a bar to the further prosecution of the libellants' claim. Even if not pleaded, this judgment, as an adjudication against the libellants upon the same breaches of contract alleged by them in their libel, would be competent, if not conclusive, evidence against them on the trial. Hopkins v. Lee, 6 Wheat. 109; Young v. Rummoll, 2 Hill, (N. Y.) 478; S. C. 5 Hill, (N. Y.) 61. As the judgment in the state court may be reversed on the appeal pending, the 1ibel should not be dismissed, but the proeeedings stayed ' until the determination of the appeal. NOTE.
Conclusiveness of JUdgments in Personam. GENERAL RULE. An adjudication upon the merits of a demand by a court of competent jurisdiction is conclusive against the parties and those in privity with them before every other court, both of the cause of action and of every fact which is a necessary part of that cause Of action; and, with regard to the facts going to make up the cause of action, the adjudication is couclusive not only in a subsequent suit upon the same cause of action, but in any suit that may be instituted between the same parties or their privies.(a) JUDGMENT MUST HAVE BEEN FINAL. In order to bar a new suit upon the same cause of action the judgment must have been final(b) in the sense of being capable of being made the subject of an appeal. No interlocutory judgment or decision upon a motion not going to the merits of the action will bar another suit upon the same demand.(c) The New York Code has, however, somewhat enlarged the effect of interlocutory jUdgments.(d) ON THE Mlmrrs. 'fhe judgment, further, must have been rendered on the merits to bar a new suit upou the same cause of action. JUdgment upon a plea in abatement, or upon a plea to the jurisdiction, or because the suit is (a)Balkum v, Salcher, 51 Ala, 81; Kelly v. Donlin, 70 Ill. 378; Stato v, Ramsburg, 43 Md, De Prou,," v, Sa"gent, 70 Me, 266; Adams v. Cameron,40 Mich, 506; Tilson v, Davio,32 Gratt. 92; Western 4" M, 00. v. Virginia Ooal 00, 10 W. Va, 25IJ; Ilendricko'on v. Norcro.., 4 C. K Green, 417; Balrirein v. McOrae, 33 Ga. Tioga R, 00. v, Blosoburg 4" 0, R. Co. 20 Wail. 137; Aurora Ouy v, We-I, 7 Wall. 82; Belott v, Mo,·gan. Id. 619; Goodrich v. The CUy, 5 Wall, 566; Doyle v. Reilly, 18 Iowa, 108; Painter V, Hogue, 4J Iowa, 426; Ai/ie v, Schmitz, 17 W; ·. 16:1; If,a:h v, Frackleton, 2IJ Wi·· 320; SmUh v. Way, 9 Allen, 472; Joru.an v, Faircloth, 34 Ga, 47; Demarest v. Darg, 32 N, Y. 281; Eimer v, Richardo, 25 Ill. 289; Babcock v. Camp, 12 Ohio St.ll; Bell v. McCulloch, 31 Ohio st. 397; Sergeant T, Ewing, 36 Pa. St. 156; Gaca! v. VVallhington, 41 V't. 163; G/ln.ooor! V. Garwood, 2] Cal. 511; Frenrh v. Howard H Ind. 455; Shutile8wol·th v. Haghey, 9 Rich. 337; Stewart v, DeM, 21 Mo, Ill; Wali«r T, Mitchell, 18 B, Mon,5!1. (b) Webb v. Buckelew, 82 N. Y. 555. (c)ItI,; 001lin8 v. Jenning8, 42 Iowa, 447, (u.)Wtbb T. Buckalew, ,upra; EaBlon v. Plckeragill, 75 N. y, 509; Rlgg, v, Purcell, 74 N. Y, 3iO: DWight v. St. John, '?5 N. Y. 203.
M.
l
TUBAL OArN.
839
premature, or upon any other matter not touching the merits of the plaintiff's demand, can only be conclusive for its own purpose; it cannot bar another action. (e) The judgment will, as has just been intimated, be conclusive of the point decided in it, and that, too, not only in another action upon the same demand, but in any other action which may afterwards be brought between the parties or their privies; but that is the extent onts conclusiveness. VOIDABLE .JUDGMENTS. Again, the judgment must have been valid.(j') If void, it can have no effect.(g) However, it matters not that it is merely - voidable as for error of law(h) or of fact. A voidable judgment is as binding in collateral acti()IJB as one free fIj{)m error. PARTIES AND, PmvtES.. On the other hand, judgments in person.am concludeonly the actual parties to the litigation, and those who claim under them.(i) By parties are to be understood all who have a right to control the proceedings, to make defence, to produce and to cross-examine witnesses, and to This will include not only the parties whose names appear in the writ, but all persons who, being liable over to reimburse the defendant, are dUly notified by him to appear and defend the sUit.(k) It has sometimes been thought, also, that witnesses who appear in the cause and fail to set up any rights which they may have inthe event of the suit or in the subject of it will be bound by the judgment ;(Z) but the better opinion is ·opposed to this position.(m) Besides, to be a party, one must act openly as such. To secretly employ.counsel and to appear as witness will not give one the rights of a party at all events.(n) In certain exceptional cases jUdgments in personam conclude strangers.(o) The effect of a judgment against manied women auel infants has been the subject of much conflict of authority. We cite some of the cases.(p) WHAT JUDGMENT ESTABLISHES. Further, a judgment is conclusive, not only of the facts expressly decided by it, so far as they are material, but also of all facts and inferences necessary to it.(q) But this is the extent of its conclusiveness. It is conclusive only of facts without the·existence and proof of
a:
(o)Pholps v. HarrlB, 101 U. S. 370; Glark v. Young, 1 Cranch, 181; Birch v. Funk, 2 Mete. (Ky.) 644; 8t..,on. v. Dunbar, 1 Blackf. 56; GrijJIn v. Seymour, 15 Iowa, 30. (f)Wizom v. Stephe.... 17 Mich. 518; Queen V. Hutchl..., 6 Q. B. D. 300; 8. C. 5 Q. B. D. 353. (B')Id. (h) Lawrence v. Milwaukee, 45 Wis. 306; Gaso v. Beauregard, 101 U. S. 688. (i) Springport v. Teutonia Bank, 75 N. Y 397; Raymon<! V. Richmond, 78 N. Y. 351; Goodman V. Niblack. 10'2 U. S. 556,562; DaDis Machine Go. v. Barnarll, 43 Mich. 379; M"Donald v. Gregory, 41 Iowa, 513; Hino v. K. 4" D. M. R. Go. 42 IoWa. 636. (j)1 Green!. I<;v. § 535. (k)SaDeland V. Green, 36 Wls 612; Valentine V. Mahoney, 37 Cal. 339; Altschul v.-Polack, 55·Cal. 633; Garr v. United Stare., 98 U. S. 433. (I)Barney v. Dewey, 13 Johns. 224 (m) Yorks v. Stule, 50 Barb. 397; Wright V. Andrew., 130 Mass. 149; Blackwood v. Brown, 32 Mich. 104; Senroederv. Lahrman, 26 Minn. S7. (n)8chroeder v. Lah1'man, .upra. (0)8ee Bigelow, Estoppel, 101-103, (3d.Ed.) (p)ld.61-63. Concerning married women: GrljJlth v. Olarke, 18 Md. 457; Morse v. Toppan,3 Gray, 411; Burk v. Hill, 55 Ind. 419; Hartman V. Ogborn, 5f Pi'. St. 1:20; Graham v. Long. 65 Pa. St. 383; Van Metre v. WoU, Zl Iowa, 341; Gambetta v. Brock,41 Cal. 78. Concerning Infant.s: Waring v. Rey. nOlds, 3 B. Mon. 69; Blake v. Dougla .., Zl Ind. 416; Marshall v. FtsMr. I Jone" Ill; Whitney v. Perter, 23 JIl. 445. (q)Sckool Tfu.teuv.Stocker,42N.J.115; Tuskav. O'Brien,68N. Y.446.
84:0
which the decision could not have been reI1l1ered.(r) When it is said, as it often has been said, that a jUdgment is conclllsivc:>, not only of everything necessary to it, but also of everything that might have been litigated, it is clear that this can be true only so far as it relates to particular issues actually joined or necessarily implied. Even in New York, where the courts have gone to a great extreme in applying the rule of necessary facts, it is held that a judgment will not bar a counter-right of action of an independent nature.(s) The real difficulty is in regard to the meaning of .. necessary facts;" but the weight of authority appears to be that facts which constitute a counter-right of action cannot be deemed to be barred by judgment for the plaintiff, unless the defendant put them in issue in the first suit; and this, they are connected with the same sUbject-matter as that upon which the first suit was MELVILLE M. BIGELOW. brollght.(t) B'Jston, January 13, 1882.
THE ANCHORIA.
(District Court, 8. D. New York.
January 6, 1882.)
In Admiralty. Exceptions to libel. Butler, Stillman ct Hubbard, for libellant. Jas. K. Hill and Wing ct Shoudy, for claimants. (r)Leonard v. Whitn'y, 109 M."". 265, 268; Crofton v. Cincinnati, 26 Ohio 8t. 671; Dunham v. BOlVer,77 N. Y. 76; Woodgate v. F'I-et. 44 N. Y. 1; Hardy v· Mills, 35 WI·. 141; Hamner v. Pounds, 57 Ala. 348; Bradley v. Briggs. 55 Ga. 354; Supples v. Cannon, 44 Conn. 424; Bigelow, Estoppel, 103, (3d Ed.) (s)BrolVn v. Gallandet, 80 N. Y. 413. (t)See Bodurtha v. Phelan, 13 Gray, 413; Ba..om v. Manning, 52 N. H. 132; Sykes v. Bonner, Cln. Sop. Ct. Rep. 464; Mandel v. Steel, 8 Mees. & W. Si>8; Da.i. v. Hedges, L. R. 6 Q. B. 687; Barker v. Cle"eland. 19 MICh. 230. The New York cases contra al'e Gales v. Pre<lon. 41 N. Y.lI3; White v. Merritt.7 N. Y. 352; Davis v. Tallcot, 12 N. Y. 184; Dunhan, v. Bower, 77 N. Y. 76; Blair V. Bartlett, 75 N. Y.150; Bellinger v. Craigue. 31 Barb. 534; Collins v. Bennett,46 N. Y. 490. See Schwinger v. Raymond.83 N. Y. 193. The subject is fUl'ther considered in the writer's work on Estoppel, pp.