Norton v. Jensen

90 F. 415, 33 C.C.A. 141, 1898 U.S. App. LEXIS 1702
CourtCourt of Appeals for the Ninth Circuit
DecidedOctober 24, 1898
DocketNo. 421
StatusPublished
Cited by4 cases

This text of 90 F. 415 (Norton v. Jensen) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Norton v. Jensen, 90 F. 415, 33 C.C.A. 141, 1898 U.S. App. LEXIS 1702 (9th Cir. 1898).

Opinion

MORROW, Circuit Judge,

delivered the opinion of the court.

The first question to be determined is whether the matters and things in controversy in the present suit are res judicata by reason of the judgment in the case of Norton v. Jensen, 7 U. S. App. 103, 1 C. C. A. 452, and 49 Fed. 859. The parties in both suits are the same Edwin Horton and Oliver W. Horton were the complainants in the case referred to, while Mathias Jensen and one John Fox M (j-e the defendants. John Fox is not a party to the case at bar, it appearing that he is now dead. His absence from the case may be treated as immaterial. It is also true that the claims of the four patents -involved in this case were sued on in the case referred o, and tliere held to be valid as against Jensen’s first machine. But here the identity between the two cases ceases. A different patent of Jensen’s is now involved. It is not the same patent involved m the previous suit, but a second patent, which the patent office deemed proper to allow him. The presumption is that Jensen invented some(hing new, or he would not have secured this second patent. Where two patents apparently describe and claim the same art or article, the question of identity is open for examination, with the presumption in favor of their diversity. Rob. Pat. § 896. At any rate, the defendant is not to be barred from presenting a full defense upon the merits by the application of the doctrine of res judicata with reference to another patent. While we appreciate fully that the doctrine of res judicata is a salutary one, intended to mitigate (lie evils which follow prolonged and repeated litigation, still the decisions show that the courts have always restricted its application to cases where, among other identities, the subject-matter was the same in both cases. Cromwell v. Sac Co., 94 U. S. 351; Russell v. Place, Id. 606; Lumber Co. v. Buchtel, 101 U. S. 638; Wilson’s Ex’r v. Deen, 121 U. S. 525, 7 Sup. Ct. 1004; Bissell v. Spring Valley Tp., 124 U. S. 231, 8 Sup. Ct. 495. The case at bar differs from the prior case of Norton v. Jensen, in that a different patent is now involved. There is prima facie a lack of identity in the subject-matter of the two cases, and therefore upon the face of the record there is no estoppel either in judgment or in evidence. As was well said by Mr. tins tice Field in the case of Russell v. Place, supra:

“According to Coke, an estoppel must 'be certain to every intent’; and if, upon the face of a record, anything is left to conjecture as to wliat was necessarily involved and decided, there is no estoppel in it when pleaded, and nothing conclusive in it when offered as evidence.” Citing Aiken v. Peck, 22 Vt. 260 and Hooker v. Hubbard, 102 Mass. 245.

Whether-the defendant has infringed the complainant’s four patents, in favor of which judgment was rendered in the former case, depends upon the evidence adduced in this case. That question obviously cannot be determined by the evidence presented in the other case. The defendant’s machine, involved in this case, purports to be a different machine from the one enjoined in the former case. Defendant contends that it is entirely different, and does not infringe the complainant’s four patents declared valid as against Jensen’s first [422]*422machine in the former case. On the other hand, the complainants contend that the changes, such as they are, existing between Jensen’s, first and second machines, are slight and immaterial. Which of these contentions is true can only be determined by the evidence adduced in the present case, and not by the evidence introduced in the former case.

This brings us to the second question on this appeal, which involves a consideration of the evidence presented in the case, as to whether Jensen’s second machine, covered by patent No. 443,445, does infringe appellant’s machines covered by the four patents sued upon. Preliminarily, however, it must first be determined what construction the claims of Norton’s alleged original patent, No. 267,014, are entitled to, —whether to the broad and liberal construction given to them by this court in Norton v. Jensen, or to the strict construction held to be applicable by this court in the subsequent decision rendered in Wheaton v. Norton. The introduction of the file wrapper in the present case effectually disposes of this question. As heretofore stated, the file wrapper was not introduced in evidence in the former case of Norton v. Jensen, but it was introduced in the subsequent case of Wheaton v. Norton. This file wrapper, the most material parts of which have been set out in the statement of the case, shows that the original claims made by Norton for his invention were disallowed and rejected by the patent office, and that he thereupon amended and limited his claims so as to conform to the determination of the patent officials. The record of the proceedings before the patent office, as disclosed by the file wrapper, shows that Norton, upon the rejection of his claims, substantially abandoned the position of being an original inventor of a machine designed for automatically applying tight, exterior fitting can-heads on can-bodies, and so amended and limited his claims as to take the unequivocal and unmistakable position of an improver. The difference between the two, in the construction of patents, is very marked, and places an entirely different aspect on the case. An original inventor, a pioneer in the art, he who evolves the original idea and brings it to some successful, useful, and tangible result, is, by the law of patents, entitled to a broad and liberal construction of his claims; whereas an improver is only entitled, and justly so, to what he claims, and nothing more. Furthermore, an application for a patent which has been rejected, and is subsequently amended to conform to the objections of the patent office, is strictly construed. In Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021, a patent was granted to an inventor for improvements in time locks, after applications for patents had been repeatedly rejected. In declaring the rule by which the claims of the patent should be construed, the supreme court, through Mr. Justice Blatchford, said:

“Limitations and provisos imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor, and in favor of the public, and looked upon as in the nature of disclaimers.”

See, also, Water-Meter Co. v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640, 2 Sup. Ct. 819; Fay v. Cordesman, 109 U. S. 408, 420, 3 Sup. Ct. 236.

[423]*423In McCormick v. Talcott, 20 How. 402, 405, the inquiry was whether McCormick was the first person who invented, in a reaping machine, the apparatus called a “divider,” performing the required functions, or whether he had merely improved an existing apparatus by a combination of mechanical devices which performed the same functions in a better manner. The court, speaking through Mr. Justice Grier, said:

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Bluebook (online)
90 F. 415, 33 C.C.A. 141, 1898 U.S. App. LEXIS 1702, Counsel Stack Legal Research, https://law.counselstack.com/opinion/norton-v-jensen-ca9-1898.