ing damages for the infringement of a patent establishes the validity thereof as between the parties, but does not disclose the construction placed upon it by the jury, nor what claims in the suit were held to be valid.10 It does not, consequently, afford a basis upon which a court of equity in a subsequent suit between the same parties can, without further evidence, determine the question of infringement by a different device.11

A judgment denying reclamation by the patentee of articles held by the trustee in bankruptcy of his licensee is binding against the former in a subsequent suit to enjoin the latter from selling the articles.12

A decree enjoining the infringement of a patent, upon a bill alleging that the defendant claimed the right to make the articles infringed under the authority of another patent, which, however, was not pleaded in the defendant's answer, did not estop parties in privity with the defendants from setting up the latter patent as a defense to a subsequent suit upon the same patent of the plaintiffs, where the former decree did not expressly adjudicate the validity of the plaintiffs' patent.13 Where the owner of a patent had sued a manufacturer for infringement, in which suit the Circuit Court of Appeals of one circuit had adjudicated in favor of the defendant; and he subsequently, in a suit in another circuit against the seller of a similar article, not made by the former defendant, obtained an adjudication in his favor by the Circuit Court of Appeals; the defendant in the first suit was granted an injunction restraining him from bringing similar suits in any part of the United States against any of that defendant's customers; although that defendant had assumed the defense of the second suit.14 But such an injunction will not lie against an exclusive licensee in another circuit when he acquired his rights before the first decision was rendered.15 A decree for a permanent injunction in one circuit, which excepted therefrom a prohibition against the defendant's selling infringing articles

10 Cheatham El. S. D. Co. v. Transit Development Co., 197 Fed. 563. 11 Ibid.

12 L. E. Waterman Co. v. Kline, C. C. A., 234 Fed. 891.

13 Leonard v. Simplex El. Heating Co., 145 Fed. 946. See a note to Westinghouse El. & Mfg. Co. v.

Stanley Instrument Co., 68 C. C. A., 541.

14 Kessler v. Eldred, 206 U. S. 285, 51 L. ed. 1065. See § 186y, supra, § 269a, infra.

15 Hurd v. James Goold Co., 197 Fed. 756.

made in another, where the patent had been held to be invalid, was held to be not an adjudication of the defendant's right to sell such articles in the latter circuit, but merely a reservation of the question until it should arise in a proper case.16

Where, upon a decree establishing the right to a trademark, it was stipulated that neither the defendant, nor its customers, should be held liable for past infringements, the complainant could not subsequently bring a suit for contributory infringement against one who had previously furnished the former defendant cartoons containing the infringing trademark.17

A person who has assumed and conducted the defense of a patent case is bound by the decree, although not a party to the same. 18 A corporation which, pending the suit, acquires the subject-matter of the patent in suit, is estopped by the decree therein; 19 and where his assignee was successful, the decree is an estoppel in his favor against the oposite party or his privies.20 Purchasers of articles subsequent to a decree in a patent suit are not privies to the decree, nor protected by the same.21

A decree dismissing a bill in equity upon the merits for an infringement of a patent is a bar to a subsequent action at law 22 or suit in equity for an infringement of the same patent by the same device,23 notwithstanding the fact that the complainant, by notice, restricted his proofs and contention to certain specified claims, which are not in issue in the subsequent suit.24 A decree sustaining the validity of a patent awarding a permanent in

16 Hurd v. Seim, 189 Fed. 591. 17 Hillside Chemical Co. v. Munson & Co., 146 Fed. 198. As to the effect of a decree which prescribes the language of a certain statement when enjoining the violation of a trademark, see G. & C. Merriam Co. v. Saalfield, C. C. A., 190 Fed. 927.

18 Rumford Chemical Works v. Hygienic Chemical Co., C. C. A., 159 Fed. 436; Confectioners' Mach. & Mfg. Co. v. Racine Eng. & Mach. Co., 163 Fed. 914; Bryant El. Co. v. Marshall, 169 Fed. 426, aff'd, C. C. A., 185 Fed. 499. See supra, § 1861.

19 Confectioners' Mach. & Mfg.

Co. v. Racine Eng. & Mach. Co., 163
Fed. 914.

20 Confectioners' Mach. & Mfg. Co. v. Racine Eng. & Mach. Co., 163 Fed. 914.

21 Hurd v. Seim, 189 Fed. 591. 22 Robinson v. Am. Car & Foundry Co., C.-C. A., 159 Fed. 131.

23 Marshall v. Bryant El. Co., C. C. A., 185 Fed. 499; affirming Bryant El. Co. v. Marshall, 169 Fed. 426.

24 Marshall v. Bryant El. Co., C. C. A., 185 Fed. 499; affirming Bryant El. Co. v. Marshall, 169 Fed. 426.

junction against infringement and directing an accounting, is interlocutory, and is not final, and is not conclusive of the validity of the patent in a subsequent suit between the parties,25 although it has been affirmed by the Circuit Court of Appeals.26

§ 186r. Effect of splitting cause of action. In order to avoid multiplicity of suits and the harassment of persons by superfluous litigation, it is a rule of law 1 and of equity 2 that a plaintiff cannot split his cause of action and bring different suits upon demands which the law considers to be indivisible. When a defendant interposes a counter-claim for a sum in excess of the court's jurisdiction, a judgment allowing so much thereof as is within the jurisdiction leaves the remainder open to recovery in a suit where the liability of the original plaintiff will be res adjudicata.8

The rule in equity is not inflexible and under special circumstances two claims under a single contract may be the subject of separate suits. Thus it has been held that where, in a suit upon the same contract for the exploitation of a mine to recover from individual defendants money spent in its development, and from a corporation, stock and dividends, the State court refused to pass upon the latter demand because it involved the internal management of a foreign corporation; a second suit might be brought in equity for this relief.5 Where an action founded on the Federal Anti-Trust Act was based on the same facts that had been pleaded in an action to enforce a State Anti-Trust law, it was held: that facts adjudicated in the latter could not be contradicted in the other.6

In the courts of the United States a judgment for the damages caused by a nuisance such as the excessive use of a street by a railroad company does not bar a subsequent action for a con

tinuance of the same nuisance." But where a street has been permanently occupied by a railroad company without compensation to the owners, all the damage thereby caused must be recovered in a single action.

Where an action for personal injuries did not abate by the plaintiff's death, it was held, that a judgment therein in favor of his administratrix did not prevent subsequent statutory actions to recover damages for his death. Where by the same acts of negligence, the plaintiff suffers a personal injury and also an injury to his property 10 or to personal property and real estate,11 separate actions for each class of damages may be maintained. Where the defendants, after an action at law against them for infringement of a patent, commit similar infringements, a suit in equity may be maintained for an injunction and damages. 12

Where different grounds or relief relating to the same property contemporaneously exist, a decree dismissing a bill praying for one is no bar to a subsequent suit praying for the other.13

A suit, to compel the transfer of stock and the payment of dividends thereupon declared, was held to be no bar to a suit after the transfer to enforce the right to subscribe for shares of a new issue of stock which existed before the prior suit was brought.14

If the prayers for relief are inconsistent, a denial of one is no bar to a subsequent suit praying the other; 15 but the grant of relief bars a subsequent suit for inconsistent relief based upon. the same facts.16 Thus, a judgment for damages, for breach of

7 Baltimore & P. R. Co. v. Fifth Baptist Church, 137 U. S. 568, 34 L. ed. 784.

8 Shepherd v. Baltimore & O. R. Co., 130 U. S. 426, 32 L. ed. 970.

9 Puget Sound Traction, Light & Power Co. v. Frescoln, C. C. A., 245 Fed. 301.

10 Boyd v. Atlantic Coast Line R. Co., 218 Fed. 653.

11 Chicago, B. & Q. R. Co. v. Dawson, C. C. A., 245 Fed. 338.

12 Cheathem El. Switching Device

v. Transit Development Co., C. C. A., 209 Fed. 229, s. c., 203 Fed. 285.

13 Union Cent. Life Ins. Co. v. Drake, C. C. A., 214 Fed. 537; Bates v. United Shce Mach. Co., 216 Fed. 140. See supra, § 185b.

14 Bates v. United Shoe Machinery Co., C. C. A., 216 Fed. 140.

15 Union Cent. Life Ins. Co. v. Drake, C. C. A., 214 Fed. 537.

16 English v. Brown, C. C. A., 229 Fed. 34.

a contract to deliver stock, is a bar to a suit to enforce an equitable lien thereupon.17

When it is doubtful upon the pleadings and judgment whether the second suit involves the splitting of a demand, testimony may be taken upon the subject.18

§ 186s. Res adjudicata against privies. A judgment or decree is binding upon both parties and those in privy with them.1 The adjudication may be used for the benefit of the original parties and their privies. It has no legal effect against persons not parties or privies to the suit but under the doctrine of stare decisis it may have great weight as a precedent, especially in patent and trade-mark cases. It was held that a decree establishing a lost muniment of title was not admissible against strangers to the suit, although it was contended to be an admission against the interest of parties against whom it was made.

Privies are all who have acquired any interest in the property in dispute after the judgment or decree, or pending the suit,8 provided, in the latter case at least, that compliance was made with the necessary statutory requirements. A grantee of part of a tract of land is not in privity with the grantee of another

17 English v. Brown, C. C. A., 229 Fed. 34.

18 Societe Nouvelle D'Armement v. Barnaby, C. C. A., 246 Fed. 68.

§ 186s. 1 Moor v. Welsh Copper Co., 1 Eq. Cas. Abr. 39; Werlein v. New Orleans, 177 U. S. 390, 44 L. ed. 817; W. A. Gaines & Co., v. Rock Spring Distilling Co., 226 Fed. 531.

2 Carroll v. Goldschmidt, C. C. A., 83 Fed. 508; Confectioners' Mach. & Mfg. Co. v. Racine Eng. & Mach. Co., 163 Fed. 914.

3 Searchlight Gas Co. v. Presto-OLite Co., C. C. A., 215 Fed. 693; McIlhenny Co. v. Gaidry, C. C. A., 253 Fed. 613; Bayley & Sons, Inc., v. Blumberg, C. C. A., 254 Fed. 696. 4 DeBearn v. Safe Deposit & Tr. Co. of Baltimore, 233 U. S. 24.

5 See infra, § 277, 279.

6 Virginia & West Virginia Coal

Co. v. Charles, C. C. A., 251 Fed. 83.

7 Moor v. Walsh Copper Co., 1 Eq. Cas. Abr. 39; Werlein v. New Orleans, 177 U. S. 390, 44 L. ed. 817.

8 Moor v. Welsh Copper Co., 1 Eq. Cas. Abr. 39. Confectioners' Mach. & Mfg. Co. v. Racine Eng. & Mach. Co., 163 Fed. 914. G. & C. Merriam Co. v. Saalfield, C. C. A., 190 Fed. 927, where those who succeeded to the business of a publisher rending a suit against him were held to be bound by the decree subsequently therein entered. But see Reinecke Coal Min. Co. v. Wood, 112 Fed. 477; Stewart v. ONeal, 237 Fed. 897, (a remainderman born after the time limited for contest of a will).

9 Jones v. Smith, 40 Fed. 314; supra, §§ 82, 83, infra, § 375.