law maritime by the courts of all maritime | pensation up to March 31, 1383, case No. nations, and I am compelled to say that I see 13733, in the court of claims, and has never no reason for creating an exception in this sued any officer nor brought any other suit than that before this present petition. case. "Your petitioner prays for an account of the full and entire number of the said cart [203]WILLIAM WHEELER HUBBELL, Appt., ridges made or used by the defendant, its v. UNITED STATES. (See S. C. Reporter's ed. 203-210.) 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 Dismissal upon the merits—estoppel in sub- by amendment. sequent action-res judicata. 1. When a case is dismissed upon an opinion filed and certain findings of fact, it will be presumed to have been dismissed upon the merits and that such dismissal covered every question put in issue by the pleadings. 2 The dismissal of a suit for infringement of a patent is a complete estoppel in favor of the successful party, in a subsequent action upon the same state of facts except for a sub-making or use of his said patented invention sequent period of infringement, even if the new action is based on a different theory. & Neither a motion for a new trial which was overruled in the former case, nor an application for an appeal which was never allowed or perfected, will prevent the judgment from being res judicata. [No. 198.] Argued April 13, 14, 1898. Decided May 31, APPEAL from a judgment of the Court of Claims dismissing the petition of William Wheeler Hubbell for judgment against the United States for compensation for making and using by the defendant and its officers and employees, of plaintiff's patented invention for an improvement in cartridges. Affirmed. See same case below, 20 Ct. Cl. 354. Statement by Mr. Justice Brown: The petition contained, amongst others, "Your petitioner has pending a suit for com NOTE. As to consequence of a nonsuit or! dismissal of complaint,-see note to Homer v. Brown, 14: 970. As to what constitutes infringement of patent; similarity of devices; designs; combinations: machines; construction of patent,-see note to Royer v. Coupe, 36: 1073. "Your petitioner further claims a just com-[204] pensation 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 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, amongst others, the following finding: "The facts in this case are the facts already found in case No. 13793, 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. 13793 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 &." The 9th finding is as follows: "The following are, in substance, the proceedings had in case No. 13793 between the same parties: "April 19, 1883. Petition filed. "October 2, 1884. Amendment to petition "January 10, 1885. for facts and brief filed. Amendment to peti Claimant's requests As to damages for infringement of patent; treble damages,-see note to Hogg v. Emerson, 13: 824. As to what questions are concluded by res judicata,-see note to Wiese v. San Francisco Musical Fund Soc. (Cal.) 7 L. R. A. 577. 205] *"April 9, 1885. Additional brief for | der his patents, between February 18, 1879, claimant filed. and March 31, 1883; "April 13, 1885. 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. Defendant's requests for "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. 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 "October 8, 1886. Claimant's request for time until November 16, 1891, when the mofindings of fact filed under order of court. tion of claimant to amend an order of court "March 15, 1887. Requests, etc., of Octo-as to evidence was allowed subject to the obber 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. jections of the defendants on the argument. The petition under consideration was filed June 11, 1888, after the first petition had[207] been dismissed by the court of claims, and is based upon the patent issued February 18, 1879, which was one of the patents involved "November 16, 1891. Motion of claimant in the first petition. A claim is made in this to amend order of court heretofore entered petition for royalty upon cartridges manuas to the evidence to be used on the trial al-factured, in accordance with this patent, and lowed, subject to objections of defendants on used by the United States for nearly six years the argument." prior to the filing of this petition, but subsequent to the time of the filing of the first petition. 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. Mr Justice Brown delivered the opinion of the court: As the claimant in his petition relies only upon the patent of February 18, 1879, No. 212,13, 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. 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 judicata. 3 Robinson, 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. 13793 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 April 19, 1883, claimant filed his petition identity of the two actions with respect to in the court of claims for a royalty upon cart- the parties, the subject-inatter, and the facts ridges and primers alleged by him to have sufficiently appear. As it further appears been manufactured by the United States un-that the petition in the former case was dis The only defense we are called upon to consider is that of res judicata. As bearing upon this defense the following facts are pertinent: missed 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. [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 Court of Claims, 354, wherein it not only appears that the case was considered and disposed of upon the merits, but the court concludes its opin ion (p. 370) in the following language: "Upon our construction of the patent in issue the government cartridges do not in fringe the claimant's; but if we are in error as to this, still the claimant cannot recover, as the essential characteristics of his inven tion 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 feat ure 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." 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 de cided 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 the subsequent action upon the same state of facts. Walker, Patents, § 468; Dubois v. Philadelphia, W. & B. Railroad Co. 5 Fish. Pat. Cas. 208; David Bradley Mfg. Co. v. Eagle Mfg. Co. 18 U. S. App. 349, 57 Fed Rep. 989, 6 C. C. A. 661. 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 ruled in the following December, clearly this Whether the reasons given by the court of claims for the dismissal of this petition are correct or not; whether, indeed, this judg-August 14, 1885, but as this motion was overment were right or wrong upon the tacts 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 3. It further appears that on August 21, upon the manufacture and use of what was 1885, an application for an appeal was filed known as the "cup-anvil cartridge," together by the claimant, but as this appeal was never with a certain reloading cartridge, which allowed or perfected, and as it does not appear had been experimentally manufactured, and that a transcript of the record was ever filed that no claims for the "cup-anvil cartridge" in this court, it is obvious that the auor for the reloading cartridge in that suit are thorities which hold that an appeal perfected in issue in the case at bar. The suit, how-to a superior court vacates the judgment of ever, was upon the same patent, and it was the court below have no application to this found by the court of claims to have been upon the same facts, and we think the estop[209]pel operates upon everything 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 in volved 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 case. We are therefore of the opinion that the defense of res judicata is sustained, and the judgment of the Court of Claims dismissing the petition is accordingly affirmed. 171 U. & The next document referring to the matter | nunc pro tunc." On March 10, 1893, a mois the following: tion for judgment was filed on behalf of the plaintiff. Office of the Ordered, that J. J. Johnson is hereby ap- Official copy furnished Mr. J. J. Johnson. Without action being had on the excep tions and motions referred to, the adminis tratrix of Bailey, on August 8, 1893, instituted an action at law, numbered 34,564, in the supreme court *of the District of Colum-[166] bia, seeking to recover from the District the sum of $10,519.20, basing the right to such recovery upon the claim that the finding of Mr. Johnson was, in fact, a final decision and award. In the affidavit filed with the declaration, as authorized by the rules of pracUnder this appointment, on February 17.tice of the court, what purports to be a copy 1892, the attorneys for the respective parties of the resolution appointing Mr. Johnson appeared before Mr. Johnson. It was claimed referee is set out, but the words "of the suit" by witnesses for the plaintiff at the trial of are omitted from before the words "of Bailey, the action subsequently brought to enforce administratrix." On September 2, 1893, the finding of the referee, that at the com- pleas were filed on behalf of the District, demencement of the hearing the latter gentle-nying that it had agreed to submit the matman, as well as the attorney for the administers of difference referred to in the declaratratrix, raised the question whether or not tion to the award and arbitrament of Johnunder the order of appointment the decision of the referee was to be final, and were assured by the attorney for the District that the decision of Mr. Johnson was to be a final .5]determination of the case. *Such witnesses also testified that subsequently, when a question arose with respect to permitting an amended declaration to be filed, setting up a claim for an extra half inch of resurfacing, the referee and attorneys discussed as to whether the decision of the referee "was to wind up finally the whole matter," and an affirmative conclusion was arrived at. No attempt, however, was inade to obtain from the commissioners of the District any modification or amplification of the writing of January 11, 1892. The hearing before the referee was concluded on July 18, 1892, when Mr. Johnson placed on the files of the supreme court of the District of Columbia in action numbered 24,279 his report as referee. The report did not refer to the mode by which its author had become referee. It was entitled in the cause, purported to contain a synopsis of the pleadings, the plaintiff's claim, a statement of the facts and the findings of "J. J. Johnson, referee." The report concluded as follows: son, and averring that Johnson had not made The consolidated action came on for trial January 13, 1895. At the trial W. Preston Williamson, a witness for the plaintiff, testified that he had sent to the commissioners the communication of September 16, 1891. Under objection and exception he was permitted to testify to conversations had separately with two of the commissioners, which tended to show that in the event of the appointment of an arbitrator or referee, it was the intention of the commissioners to submit to the individual selected as referee "Upon the evidence and the law I have al- or arbitrator the final determination of the lowed the plaintiff for the unexecuted bal- entire controversy referred to in Williamance of 11,385 square yards, $4,440.15, being son's letter. Also under objection and exthe profit between the cost of resurfacing the ception, the witness testified that after the streets at fifty cents per square yard and order appointing Mr. Johnson referee was eighty-nine cents, the price received, and for made by the commissioners, he and the attorthe extra one-half inch I have allowed the ney for the District, in the presence of the plaintiff $6,079.05 at the contract price, ag-referee, discussed the scope of the submission, gregating the sum of $10,519.20. I do therefore find that there is due to the plaintiff from the defendant the sum of $10,519.20, besides costs." The referee also fixed his fee at $550, which was paid by the administratrix. *and agreed that the decision of the referee[167] was intended by the parties to the controversy to be a final disposition of the whole matter. The indorsements on the letter of Mr. Williamson, the letter of the assistant attorney of the District, and other memoOn September 23, 1892, exceptions were randa heretofore set out were put in evidence filed on behalf of the District to this report. on behalf of the plaintiff. Mr. Hazleton, a Upon the exceptions, the attorney for the former attorney for the District, also testiplaintiff made the following indorsement:fied for the plaintiff, in substance, under ob"I consent that these exceptions be filed jection and exception, that it was the inten 171 U. S. tion of the commissioners, as he knew from oral statements made to him by two of the commissioners, that the appointment of a referee would be for the purpose of ending the whole controversy, and that nothing occurred between the time of the appointment of the referee and the making of the report to change that understanding. He also testified as to the filing of the amended declaration before the referee, setting up the claim for an extra half inch of resurfacing, which was not embraced in the pending suit at the time the referee or arbitrator was appointed. J. J. Johnson also testified on behalf of the plaintiff, under objection and exception, as to the understanding had with him at the hearing before him as referee, by the counsel for the respective parties, regarding the finality of any decision made by him, and as to the filing of the amended declaration for the extra half inch of resurfacing. He testified that he filed the report made by him in court of his own mction, and averred that certain written matter filed with his report was not a part of the report, and that it did not contain all the evidence, though it contained all the oral testimony given before him. The report was next put in evidence, objections being first separately interposed to its introduction on the grounds: 1, that the papers and evidence attached thereto should also be put in evidence; and, 2, that the referee was without authority to make an award. To the overruling of each objection the defendant duly excepted. offer made, but it is unnecessary to notice the In rebuttal, Mr. Williamson reiterated "That he wrote the letter of September 16, 1891, at his office, 912 F street; that he did not know why the District filed exceptions, as it was understood that the report was to be final; that witness filed the motion to confirm the award because he thought it the best thing, the only thing, that could then be done, and that he thought it would be simply a matter of form, and he would have confirmation at once of the award, and that the money would be paid; but the District, instead of doing that, violated its agreement; that witness did not remember ever consenting to the[169] filing of exceptions to the award. Now that counsel shows him the paper which is the exception to the award, witness remembers that he signed the paper consenting that the exceptions should be filed nunc pro tunc. Mr. Richardson came to him and asked him if he would make any special objection to the exceptions being filed; that it ought to be filed, so that the District might make their objections, and for that purpose he did it, and did not consent to it because he thought it was not final; that there was not a copy of the award served by him on the commissioners; that Mr. Johnson was their arbitrator, and it was not for witness to serve them with a copy." The evidence was then closed. The trial judge granted a request of the defendant that the jury be instructed to render a verdict for the defendant in the first action, and an exception was duly noted on behalf of the administratrix. The trial judge also granted a re that the jury be instructed to find for the plaintiff if they found from the evidence that the commissioners accepted the proposition contained in Mr. Williamson's letter, that in pursuance of such acceptance the commissioners made the order of January 11, 1892, and that the hearing before Mr Johnson was proceeded with under such appointment, and the declaration amended at the hearing by consent of counsel. An exception was taken to the granting of this instruction. John W. Douglass, one of the commissioners for the district in office at the time of the appointment of the referee, testified on behalf of the plaintiff that the intention of the ..68]*commissioners was to make the reference final. The evidence for the plaintiff was closed with the testimony of the plaintiff, who stated, in effect, that the letter of Sep-quest of counsel for the plaintiff, in substance tember 16, 1891, had been sent to the commissioners with her approval, and that nothing had been paid her on account of the award. For the defendant, John W. Ross, who was a commissioner at the time of the appointment of Mr. Jchnson, testified that he was an attorney at law, knew the difference between an arbitration and order of reference for a report, and that his understanding when the appointment of Mr. Johnson as referee was made was that the appointment was not of an arbitrator, but was simply one of refer- The following requests for instructions were ence. He further testified "there was no then asked on behalf of the defendant, which record of the appointment of the referee, ex-being overruled, separate exceptions were cept the one in evidence, unless the pencil memorandum may be taken as a record." The witness denied that he made statements attributed to him by the witness for the plaintiff, to the effect that it was the intention of the commissioners that the decision of Mr. Johnson should be final. After Mr. Ross had concluded his testimony, the record and proceedings in action No. 24,279 were introduced in evidence on behalf of the defendant. On the settlement of the bill of exceptions a dispute arose as to whether the papers attached to the report of the referee had been put in evidence by the noted: "2. The jury are instructed, on the whole evidence in cause No. 34,564, they are to render a verdict for the defendant. "3. The jury are instructed that the commissioners of the District of Columbia were without authority to agree to submit the matters in controversy in the case of Bailey, Adm'r, v. The District of Columbia, at law, No. 24,279, to the final award of an arbitrator, but that said commissioners had authority to agree to refer the case for the award and report of a referee, subject to the approv al of the court." |