
    RANCOURT v. PANCO RUBBER CO.
    No. 2510.
    Circuit Court of Appeals, First Circuit.
    Feb. 11, 1931.
    
      Harry Dexter Peck, of Providence, R. I., for appellant.
    Melvin R. Jenney, of Boston, Mass. (Horace Van Everen and Van Everen, Fish, Hildreth & Cary, all of Boston, Mass., on tbe brief), for appellee.
    Before BINGHAM, ANDERSON, and WILSON, Circuit Judges.
   BINGHAM, Circuit Judge.

This is a bill in equity brought in the District Court for Massachusetts, February 15, 1929, by Walter J. Raneourt, a citizen of Massachusetts, against tbe Paneo Rubber Company, a Massachusetts corporation, for infringement of bis patent, No. 17,122, reissued October 30,1928. Among other defenses set up in its answer, tbe defendant alleges in substance that on November 18, 1925, tbe plaintiff brought a prior suit against tbe defendant on bis original patent, No. 1,514,100, of which patent No. 17,122 is a reissue; that the claims of tbe reissue' patent here in suit present no substantial difference over the claims sued upon in tbe prior suit; that tbe machine complained of as an infringement in tbe prior suit is tbe same machine complained of as an infringement herein; that in tbe prior suit it was held that tbe alleged' invention or discovery of the plaintiff was not in fact any invention or discovery, and that tbe original patent was invalid; that the issues raised and decided in tbe prior suit are tbe same as those raised in this suit and by reason thereof tbe plaintiff is estopped to maintain tbe present suit.

It appears that tbe claims in issue and alleged to have been infringed in tbe prior suit were claims 1, 2, 4, and 12 of tbe original patent; that the defendant in its answer in that suit alleged that tbe devise there in question did not disclose patentable invention; that tbe district judge, at tbe conclusion of tbe bearing, ruled and found “that there is no patentable invention shown by this patent”; and, having so found, on November 21, 1927, entered á final decree from which no appeal was taken. It also appears that on July 26, 1928, tbe plaintiff surrendered bis original patent, made application for a reissue patent, and on October 30, .1928, obtained reissue patent No. 17,122; that tbe specification of tbe reissue patent was somewhat changed, and its claims 1 and 2 and 13 to 16, inclusive, were new, while claims 3 to 12, inclusive, were old. The claims now in issue are tbe new claims'1, 2, 13,14, 15, and 16 of tbe reissue patent.

At tbe trial of tbe instant case, in May, 1930, tbe only question considered and passed upon was whether tbe plea of res ad judicata was good as a bar to tbe action. As to this the court held that tbe decree in tbe prior suit upon tbe issue of lack of invention was conclusive and estopped tbe plaintiff from maintaining tbe present suit, and entered a decree dismissing tbe bill. It was stipulated that, in tbe event the appellate court reversed tbe ruling, the ease should be remanded to tbe District Court for a bearing on tbe merits.

It is from this decree that tbe appeal is taken, and tbe single question presented is whether tbe ruling of tbe District Court that tbe decree in tbe prior suit was a bar to tbe present suit was correct.

In considering tbe question of res adjudieata, it is necessary to keep in mind whether tbe second suit, though between tbe same parties as tbe first ‘one, is for the same or a different cause of action. As said by this court in Sutton v. Wentworth, 247 F. 493, at page 501: “There is a difference, sometimes overlooked, between tbe effect of a judgment as a bar to tbe prosecution of a' second action for tbe same cause and its effect as an estoppel in another suit between tbe same parties upon a different cause of action. In tbe former ease a judgment on the merits must be pleaded, and is an absolute bar to a subsequent action; it concludes tbe parties, not only as to every matter which was offered and received to sustain or defeat the suit, but also as to any other matter which might have been offered for that purpose. In the latter case, the judgment in the prior action may be offered in evidence, and operates as an estoppel only as to those matters which were there directly in issue and either admitted by the pleadings or actually tried. Southern Pacific Railroad v. United States, 168 U. S. 1, 57, 59, 60, 18 S. Ct. 18, 42 L. Ed. 355.” See also Cromwell v. County of Sac, 94 U. S. 351, 352, 24 L. Ed. 195; Bartell v. United States, 227 U. S. 427, 33 S. Ct. 383, 57 L. Ed. 583.

It is evident that the present suit, based on the reissue patent (a new patent) and upon the new claims, is a suit for a different cause of action from that involved in the prior suit, and that the decree in the prior suit is not a bar to the prosecution of this suit. The court below, therefore, erred in ruling that it was a bar. Frink v. Erikson (C. C. A.) 20 F.(2d) 707, at page 712.

The court should have proceeded to consider the ease on its merits. Had it done so and found that the machine called for in the specification and claims of the reissue patent was the same machine called for in the specification and claims of the original patent, and that the decree in the prior suit was based on a finding that the machine of the original pat-tent did not involve patentable invention, then as that issue would be shown to be the same in the second suit as in the prior one, the decree in the prior suit, that the machine did not involve patentable invention, would conclude that issue in the second suit and a decree should have been entered for the defendant on the merits of the case.

Furthermore, had it found that the machine called for in the reissue patent was not the same as the one called for in the original patent, as alleged in paragraphs XII and XIII of the defendant’s answer, then the court should have taken such action as that situation called for (Rev. St. § 4916 [35 USCA § 64]), as a reissue patent can only be granted for the same invention for which the original patent was granted. I. T. S. Rubber Co. v. Essex Rubber Co. (C. C. A.) 1 F.(2d) 780, at page 783; Nash Engineering Co. v. Cashin (C. C. A.) 13 F.(2d) 718, 722; Northrop v. Draper Co. (C. C. A.) 239 F. 719, 721.

The decree of the District Court' is vacated, and the case is remanded to that court for further proceedings not inconsistent with this opinion. No costs.  