Rights between litigants once established by the final judgment
of a court of competent jurisdiction must be recognized in every
way, and wherever the judgment is entitled to respect, by those who
are bound thereby.
The defeated party in an infringement suit will be restrained by
a court of equity from interfering with the business of the
successful defendant by bringing infringement suits based on the
same patents against the customers of the latter.
This case comes to this Court from the Circuit Court of Appeals
for the Seventh Circuit upon a certificate of that court of
questions of law concerning which it desires instructions.
Accompanying the certificate is a statement of facts. The statement
of the facts and the certificate of the questions of law are as
follows:
Kessler, a citizen of Indiana, prior to 1898, had built up an
extensive business in the manufacture and sale of electric cigar
lighters, and had customers throughout the United States. Eldred, a
citizen of Illinois, and an inhabitant of the Northern District,
was the owner of patent No. 492,913, issued to Chambers on March 7,
1893, for an electric lamp lighter. Eldred was a competitor of
Kessler's and manufactured a similar form of lighter (entirely
dissimilar from that described in the Chambers patent), so that it
was not a matter of much importance to customers which lighter they
bought. In 1898, Eldred began a suit against Kessler in the
District of Indiana for the infringement of the Chambers patent.
The bill alleged that Kessler's manufacture and sale of the Kessler
lighter infringed all the claims. The answer denied that Kessler's
lighter infringed any of the Chambers claims. On final hearing, the
circuit court found for Kessler on the issue of noninfringement
Page 206 U. S. 286
and dismissed the bill. That decree was affirmed in 1900 by the
Circuit Court of Appeals for the Seventh Circuit.
Eldred v.
Kessler, 106 F. 509.
Subsequently, Eldred brought suit on the same patent in the
Northern District of New York against Kirkland, who was selling a
similar lighter, but not of Kessler's make. The circuit court found
for Kirkland on the issue of noninfringement, and dismissed the
bill. The Circuit Court of Appeals for the Second Circuit reversed
that decree and held the Kirkland lighter to be an infringement.
Eldred v. Kirkland, 130 F. 342.
In June, 1904, Eldred filed a bill for infringement of the same
patent in the Western district of New York against Breitwieser,
user of Kessler lighters, which were identical with those held in
Eldred v. Kessler to be no infringement of the Chambers
patent. Many of Kessler's customers were intimidated by the
Breitwieser suit, so that they ceased to send in further orders for
lighters, and refused to pay their accounts for lighters already
sold and delivered to them. Kessler assumed the defense of the
Breitwieser suit, and will be compelled, in the proper discharge of
his duty to his customers, to assume the burden and expense of all
suits which may be brought by Eldred against other customers. In
this state of affairs, Kessler, a citizen of Indiana, in July,
1904, filed a bill against Eldred in the Circuit Court for the
Northern District of Illinois, the state and district of Eldred's
citizenship and residence, to enjoin Eldred from prosecuting any
suit in any court of the United States against anyone for alleged
infringement of the Chambers patent by purchase, use, or sale of
any electric cigar lighter manufactured by Kessler and identical
with the lighter in evidence before the Circuit Court for the
District of Indiana and the Circuit Court of Appeals for the
Seventh Circuit in the trial and adjudication of the suit of Eldred
against Kessler. From an adverse decree by the circuit court,
Kessler perfected an appeal to this Court.
Upon the foregoing facts the questions of law concerning
Page 206 U. S. 287
which this Court desires the instruction and advice of the
Supreme Court are these:
First. Did the decree in Kessler's favor rendered by the Circuit
Court for the District of Indiana, in the suit of Eldred against
Kessler, have the effect of entitling Kessler to continue the
business of manufacturing and selling throughout the United States
the same lighter he had theretofore been manufacturing and selling,
without molestation by Eldred, through the Chambers patent?
Second. Did the decree mentioned in the first question have the
effect of making a suit by Eldred against any customer of Kessler's
for alleged infringement of the Chambers patent by use or sale of
Kessler's lighters a wrongful interference by Eldred with Kessler's
business?
Third. Did Kessler's assumption of the defense of Eldred's suit
against Breitwieser deprive Kessler of the right, if that right
would otherwise exist, of proceeding against Eldred in the state
and district of his citizenship and residence for wrongfully
interfering with Kessler's business?
MR. JUSTICE MOODY delivered the opinion of the Court.
The industry of counsel has not discovered any decision on the
exact questions presented by the certificate, and they agree that
those questions are not settled by controlling authority. The
decision of the case turns upon the effect of the judgment in the
suit which Eldred brought against Kessler. Both manufactured and
sold electric cigar lighters. Eldred, being
Page 206 U. S. 288
the owner of a patent issued to one Chambers for an electric
lamp lighter, brought a suit against Kessler, in which it was
alleged by the plaintiff and denied by the defendant that the cigar
lighters manufactured by Kessler infringed each and all of the
claims of the Chambers patent. On the issue thus joined, there was
final judgment for Kessler. This judgment, whether it proceeds upon
good reasons or upon bad reasons, whether it was right or wrong,
settled finally and everywhere, and so far as Eldred, by virtue of
his ownership of the Chambers patent, was concerned, that Kessler
had the right to manufacture, use, and sell the electric cigar
lighter before the court. The court, having before it the
respective rights and duties on the matter in question of the
parties to the litigation, conclusively decreed the right of
Kessler to manufacture and sell his manufactures free from all
interference from Eldred by virtue of the Chambers patent, and the
corresponding duty of Eldred to recognize and yield to that right
everywhere and always. After this conclusive determination of the
respective rights and duties of the parties, Eldred filed a bill
for an infringement of the same patent against Breitwieser, on
account of his use of the same kind of Kessler cigar lighter which
had been passed on in the previous case, and Kessler has assumed
the defense of that suit. Whether the judgment between Kessler and
Eldred is a bar to the suit of
Eldred v. Breitwieser,
either because Breitwieser was a privy to the original judgment or
because the articles themselves were, by that judgment, freed from
the control of that patent, we deem it unnecessary to inquire. We
need not stop to consider whether the judgment in the case of
Eldred v. Kessler had any other effect than to fix
unalterably the rights and duties of the immediate parties to it,
for the reason that only the rights and duties of those parties are
necessarily in question here. It may be that the judgment in
Eldred v. Kessler will not afford Breitwieser, a customer
of Kessler, a defense to Eldred's suit against him. Upon that
question we express no opinion. Neither it nor the case in which it
is raised is before us. But the question here
Page 206 U. S. 289
is whether, by bringing a suit against one of Kessler's
customers, Eldred has violated the right of Kessler. The effect
which may reasonably be anticipated of harassing the purchasers of
Kessler's manufactures by claims for damages on account of the use
of them would be to diminish Kessler's opportunities for sale. No
one wishes to buy anything if with it he must buy a law suit. That
the effect to be anticipated was the actual effect of the
Breitwieser suit is shown by the statement of facts. Kessler's
customers ceased to send orders for lighters, and even refused to
pay for those which had already been delivered. Any action which
has such results is manifestly in violation of the obligation of
Eldred, and the corresponding right of Kessler, established by the
judgment. Leaving entirely out of view any rights which Kessler's
customers have or may have, it is Kessler's right that those
customers should, in respect of the articles before the court in
the previous judgment, be let alone by Eldred, and it is Eldred's
duty to let them alone. The judgment in the previous case fails of
the full effect which the law attaches to it if this is not so. If
rights between litigants are once established by the final judgment
of a court of competent jurisdiction, those rights must be
recognized in every way, and wherever the judgment is entitled to
respect, by those who are bound by it. Having, then, by virtue of
the judgment, the right to sell his wares freely, without hindrance
from Eldred, must Kessler stand by and see that right violated, and
then bring an action at law for the resulting damage, or may he
prevent the infliction of the unlawful injury by proceedings
in
personam in equity? If Eldred succeeds in his suit against one
of Kessler's customers, he will naturally bring suits against
others. He may bring suits against others whether he succeeds in
one suit or not. There may be, and there is likely to be, a
mutiplicity of suits. It is certain that such suits, if
unsuccessful, would at the same time tend to diminish Kessler's
sales, and to impose upon him the expense of defending many suits
in order to maintain the right which, by a judgment, has already
been declared to exist. If the suits are
Page 206 U. S. 290
successful, the result will be practically to destroy Kessler's
judgment right. Moreover though the impairment or destruction of
Kessler's right would certainly follow from the course of conduct
which Eldred has begun, it would be difficult to prove, in an
action at law, the extent of the damage inflicted. An action at law
would be entirely inadequate to protect fully Kessler's
unquestioned right, and, under these circumstances, though there
may be no exact precedent, we think that the jurisdiction in equity
exists. Nor do we see any good reason why Kessler's interposition
for the defense in the suit of
Eldred v. Breitwieser
debars him from his remedy in equity.
It follows from the foregoing reasoning that the first and
second questions certified should be answered in the affirmative,
and the third and fourth in the negative, and
It is so ordered.
