et al., D.C., 10 F.Supp. 779; Borchard, Declaratory Judgments, 2d Ed. 1941, 807.
It is contended, in effect, by the defendant that the issues of validity and infringement are res adjudicata, having been determined in the action, hereinabove referred to, in the United States District Court, Eastern District of Pennsylvania. The contention is untenable. It is well recognized that one who prosecutes or defends a suit in the name of another, to establish and protect his own right, or who assists in the prosecution or defense of an action in aid of some interest of his own, and who does this openly, to the knowledge of the opposing party, is as much bound by the judgment, and as fully entitled to avail himself of it, as if he had been a party to the record. Souffront v. La Compagnie Des Sucreries, 217 U.S, 475, 30 S. Ct. 608, 54 L. Ed. 846; E.I. Du Pont De Nemours & Co. v. Sylvania Industrial Corp., 4 Cir., 122 F.2d 400; Doherty Research Co. v. Universal Oil Products Co., 7 Cir., 107 F.2d 548; Carson Inv. Co. v. Anaconda Copper Mining Co., 9 Cir., 26 F.2d 651; N.O. Nelson Mfg. Co. v. F.E. Myers & Bro. Co., 6 Cir., 25 F.2d 659; Beyer Co. et al. v. Fleischmann Co., 6 Cir., 15 F.2d 465; Elliott Co. v. Roto Co. et al., 2 Cir., 242 F. 941; Bemis Car Box Co. v. J.G. Brill Co., 3 Cir., 200 F. 749; Foote v. Parsons Non-Skid Co. et al., 6 Cir., 196 F. 951. The said rule, however, is not applicable in the instant case. The plaintiff herein was neither a defendant, nor in privity with a defendant in the prior action, and is, therefore, not estopped from again raising the same issues. Triplett et al. v. Lowell et al., 297 U.S. 638, 56 S. Ct. 645, 80 L. Ed. 949; I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 47 S. Ct. 136, 71 L. Ed. 335; Rumford Chemical Works v. Hygienic Chemical Company, 215 U.S. 156, 30 S. Ct. 45, 54 L. Ed. 137; Stoody Co. v. Carleton Metals, Inc., et al., 9 Cir., 111 F.2d 920; Nash Motors Co. v. Swan Carburetor Co., 4 Cir., 105 F.2d 305; Hy-Lo Unit & Metal Products Co. v. Remote Control Mfg. Co., 9 Cir., 83 F.2d 345; Traitel Marble Co. v. U.T. Hungerford Brass & Copper Co., 2 Cir., 18 F.2d 66. The rule is not operative in the absence of actual participation in and control of the prior litigation by the party by whom or against whom the rule is invoked. Triplett et al. v. Lowell et al; Rumford Chemical Works v. Hygienic Chemical Co.; I.T.S. Rubber Co. v. Essex Rubber Co.; E.I. Du Pont De Nemours & Co. v. Sylvania Industrial Corp., all supra.
The argument of the defendant is open to the further objection that the issues of the present suit are not identical with those of the prior suit. Claim No. 6 of the patent, as hereinabove stated, was the only one adjudged valid and infringed; the remaining claims were not litigated. The claims of a patent are separable, and, therefore, the estoppel of a prior judgment relating thereto extends only to those litigated, or which might have been litigated, in the action. Triplett et al. v. Lowell et al., supra; Russell v. Place, 94 U.S. 606, 24 L. Ed. 214; Nash Motors Co. v. Swan Carburetor Co., supra; General Motors Corp. v. Swan Carburetor Co., 6 Cir., 88 F.2d 876; Bemis Car Box Co. v. J.G. Brill Co., supra; Thompson et al. v. N.T. Bushnell Co., C.C., 80 F. 332; Mack v. Levy et al., C.C., 60 F. 751.
It is argued by the defendant that the plaintiff having either failed or refused to intervene in the prior action, is now estopped from initiating the present proceedings under the Declaratory Judgment Act. The argument finds no support in the reported decisions. The plaintiff, as the manufacturer of the alleged infringement involved in the prior action, could not intervene as a matter of right. Intervention under such circumstances is permissive, and may be either permitted or denied by the trial court in the exercise of its sound discretion. E.W. Bliss Co. v. Coal Metal Process Co., supra; Demulso Corporation v. Tretolite Co. et al., 10 Cir., 74 F.2d 805; Foote v. Parsons Non-Skid Co. et al., supra; see Chandler & Price Co. v. Brandtjen & Kluge, Inc., et al., 296 U.S. 53, 57, 56 S. Ct. 6, 80 L. Ed. 39; General Metalware Co. v. Nelson, 8 Cir., 107 F.2d 77, 80.
The defendant, in support of his contention that the issues of the instant suit have been adjudicated, relies also on the cases of Jungersen v. Jenkins et al., D.C., 30 F.Supp. 615, and Jungersen v. Morris Kaysen Co., D.C., 31 F.Supp. 703, in both of which the patent was held valid and infringed. The decisions in these cases by courts of coordinate jurisdiction, although persuasive as to the issues determined, are not binding on this court. The said decisions are not necessarily determinative of the issues of the immediate suit. Sanitary Refrigerator Co. v. Winters et al., 280 U.S. 30, 50 S. Ct. 9, 74 L. Ed. 147; Standard Brands, Inc. v. National Grain Yeast Corp., 3 Cir., 101 F.2d 814, affirmed, 308 U.S. 34, 60 S. Ct. 27, 84 L. Ed. 17; Traitel Marble Co. v. U.T. Hungerford Brass & Copper Co., supra; McLaren Products Co. v. Cone Co. of America, D.C., 7 F.2d 120.
The motion to dismiss the complaint is denied.
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