those matters in issue or points controverted, upon the determination of which the finding or verdict was rendered. In all cases, therefore, where it is sought to apply the estoppel of a judgment rendered upon one cause of action to matters arising in a suit upon a different cause of action, the inquiry must always be as to the point or question actually litigated and determined in the original action, not what might have been thus litigated and determined. Only upon such matters is the judgment conclusive in another action.

There are compelling reasons why the rule of estoppel by judgment should not be applied with the same severity in interference proceedings in the Patent Office as in cases at law and in equity. In the latter instances the issues are made up by the parties themselves, with wide latitude for amendment to meet unexpected contingencies arising in the course of trial. In interferences the issues are made up by the proper official in the Patent Office, and the case is confined to the issues thus found. True, they are made from the applications of the respective parties, which, in a sense, constitute the pleadings in the case; but the issue, nevertheless, is the result of the view taken by the official of the case presented by the applications, and is conclusive on the parties.

Unlike a suit at law or in equity, the parties are limited in an interference to the specific issue or issues found by the Patent Office. The broad rule that all questions are res judicata which were, or might have been, determined in the former case must be applied with reference to the limitations of the particular proceeding. It may often occur within the broad scope of a proceeding at law or in equity that matters which might have been determined and which. constitute estoppel in a second action, would have no application in an interference proceeding. In the former proceeding the whole purpose of the litigation may be examined to ascertain the issues which might have been determined in a prior suit, but in the latter the investigation is limited to the specific issue or issues pointed out by the Patent Office, as embraced within the interference. It follows, therefore, that only the matters that might have been presented relative to the particular thing or issue determined in the former interference can constitute estoppel in a second proceeding between the same parties relating to the same subject-matter.

This brings us to the narrow issue of the interference and the claims of the present divisional application. Do they present a single cause of action? We think not. In the interference, the sole issue upon which the case was decided was whether or not the claim called for a device capable of rising from and alighting upon the water. That was the only "point or question actually litigated and determined" in that action. The present claims relate solely to a device capable of traveling at high speed upon the water, without regard to its ability to rise from or alight upon the water. That question was

not determined in the former case. Indeed, we held that it could not be under the count there in issue. The claims of the present issue were found to be patentable over the prior art, but were rejected solely upon the grounds herein stated. Though relating to the same structure, the specific claim found to have been made in the former case was for a different invention than that here involved; and, the cause of action being different, we are of opinion that appellant is not estopped to make the claims of the present issue.

The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed.

[Court of Appeals of the District of Columbia.]

ENGLE v. MANCHESTER AND SPOONER.

Decided March 6, 1917.

238 O. G., 1331; 46 App. D. C., 220.

1. SERVICE OF PROCESS-EXEMPTION FROM SERVICE-EXTENT.

The exemption from service of civil process while in attendance upon a hearing before a judicial tribunal and for a reasonable time in going and returning extends to all forms of process of a civil character.

2 SAME-SAME DURING INTERFERENCE PROCEEDINGS.

Non-residents present in the District of Columbia solely for attendance on the taking of testimony in interference proceedings in the Patent Office between themselves and a rival inventor are exempt from service of sub pœna in a suit brought by such rival against them in the courts of the District.

3. SAME PRIVILEGE-PRACTICE-MOTION TO DISMISS.

When in a motion to vacate service the question of privilege, involving facts not apparent from the record, was raised by motion to dismiss, Held the better practice would require the filing of a plea in abatement. Mr. Henry E. Davis and Mr. A. L. Newmyer for the appellant. Mr. W. C. Sullivan for the appellees.

SHEPARD, C. J.:

June 1, 1916, George S. Engle filed his bill in the Supreme Court of the District of Columbia against Manchester and Spooner in which it was alleged that for many years plaintiff had been engaged in making and perfecting a certain invention of a primary electrical battery, which he describes, and that for eleven years past he had prosecuted his invention in the State of Rhode Island and the District of Columbia, spending large sums of money in experimental work, maintenance of a shop, etc.; that during five or more years up to, to wit, December, 1912, he employed the defendants, Man

chester and Spooner, to help him set up and demonstrate parts of said battery, which work they performed entirely under direction of plaintiff; that they were paid for their services by said Engle, which were wholly confined to the developing of the original idea of said plaintiff, and entirely ancillary and auxiliary to the development of his said inventions; that said inventions are of great value, and for the purpose of protecting his rights said plaintiff on October 8, 1912, filed in the United States Patent Office applications for Letters Patent thereon, which applications are now pending in said Office. He further avers that thereafter the defendants fraudulently, intending to reap for themselves the benefit of said invention, and to rob and defraud the said Engle of his inventions, and to claim them for themselves, on, to wit, February 1, 1913, made application jointly for joint patents on the plaintiff's said invention for the domain of Great Britain, which said patent was accepted November 13, 1913, and for the Republic of France on March 13, 1913, which said French Letters Patent were delivered May 26, 1913, and published August 2, 1913.

Plaintiff avers that said French and British patents were procured through false oaths and fraud on the part of the said defendant's in claiming to be the real inventors of said inventions, when they knew that plaintiff was the real inventor thereof, and that they were his employees learning secrets in his employ, and attempting to claim them as their own, and when they knew that he had applied for Letters Patent on the same in the United States Patent Office.

That by reason of the fact that plaintiff is the inventor and owner of said patents, and is entitled to the protection of patents for said invention, not only in the United States, but in foreign countires, by process of law he is entitled to have the said patents so fraudulently and falsely issued to the defendants in France and Great Britain assigned to him as the real owner thereof. He is informed that said British and French patents are in the names of said defendants and have not been assigned by them, and even so, cannot deprive him of his right in the premises, and further, that he is entitled to have the benefits of any pecuniary profit, contracts, or licenses, which the said defendants may have sought to execute or grant by virtue of said patents.

He prays for a restraining order to the defendant's from conveying or attempting to convey the aforesaid British and French patents, or any interest therein, or any rights thereunder, except to the plaintiff or his assigns, and that upon a final hearing the said temporary restraining order be made permanent.

Second, that the said defendants, their agents, and assigns, be required to assign to the plaintiff all rights to and under the aforesaid French and British patents, and all interest therein or therefrom.

Third, that the defendants be required to account' to the plaintiff for all proceeds received under or by reason of said patents, and be required to turn over and deliver to the plaintiff all effects thereto appertaining, and that a personal decree be rendered against said defendants for any deficiency by reason of said patents.

Subpoenas were served on defendants personally June 1, 1916, by the marshal of the District of Columbia.

June 9th, 1916, defendants filed motions to vacate said process, and filed affidavits, from which it appears that defendants are non-residents of the District and residents of the State of Rhode Island; that on the 1st day of June, 1916, they were present in the city of Washington as parties to certain interference proceedings between themselves, on one hand, and George S. Engle, named as plaintiff in the aboveentitled cause, on the other, then pending in the United States Patent Office; that they were, at the time aforesaid, as well as now, non-resident's of the District of Columbia, and were, on the said date, in the city of Washington for the sole purpose of the taking of the testimony on behalf of the said George S. Engle in the said interference proceedings; that while actually in attendance upon the taking of the said testimony, and while said Engle was on the witness stand, and under cross-examination by counsel for the said Manchester, a deputy United States marshal entered the room where the said testimony was then and there being taken and attempted to serve upon the defendants a subpoena in the above-entitled cause by handing a copy of the same to them, which is hereto annexed.

A further affidavit sets out the interference proceedings in the Patent Office between plaintiff and defendants, and further avers that they came to Washington upon a telegram from their attorneys advising them of the taking of testimony in the city of Washington by the plaintiff and that it was essential to the proper protection of their interests in said interference proceedings that they be present during the taking of said testimony, and that they went to Washington for that purpose only.

On the hearing of the motion to vacate certain testimony was introduced, being a copy of the depositions of George E. Engle, from which it appears that he directed the preparation of the bill some time before service, and that when the parties appeared in the proceedings in this District he directed his attorneys to finish up the bill and institute suit, and to have the subpoenas served, and that they were served during the hearing before the notary in said interference case.

He further said that he directed the suit months ago, but supposed it had been delayed until the parties voluntarily appeared within the jurisdiction of the court; that he told his attorneys that

they were here and to finish up and institute the suit and have the subpoenas served.

On June 26, 1916, the court granted said motion and ordered that the service of process upon the said defendants be vacated, set aside, and for naught held.

Plaintiff has appealed from this decree.

The question involved in this case is the privilege of the party who was served with civil process while in voluntary attendance upon a judicial hearing wherein his interests were involved. Plaintiff and defendants jointly were rival applicants for a patent for the invention described in the bill, and the interference had been duly declared in the Patent Office between them. The defendants, residing in Rhode Island, were in attendance upon the taking of the testimony of the plaintiff before an Examiner at the time of the service of this process in the city of Washington. Plaintiff was testifying at the time when the process was served and defendants had come to the place of hearing upon the advice of counsel that their attendance was important to them in the depending interference.

This question of privilege of a party to exemption from service of civil process while in attendance upon a hearing has been the subject of discussion in very many American cases. The following afford examples: Netrograph Mfg. Co. v. Scrugham, (197 N. Y., 377;) Parker v. Мо Marco, (136 N. Y., 585;) Powell v. Pangborn, (161 N. Y., App. Div., 453;) Rix v. Sprague Co., (157 Wis., 572;) Watson v. Judge, (40 Mich., 729 :) Mitchell v. Huron, (53 Mich., 541;) Mulhearn v. Press Pub'g Co., (53 N. J. L., 153;) Bank v. Ames, (39 Minn., 179;) Breon v. Lumber Co., (83 S. C., 221;) Bishop v. Vose, (27 Conn., 1;) Greer v. Young, (120 Ill., 184;) Tiedemann v. Tiedemann, (35 Nev., 259.) These cases are not all in agreement as to the extent of the privilege. The Federal courts are in substantial agreement. (See Larned v. Griffin, 12 Fed. Rep., 590; Nicholas v. Horton, 14 Fed. Rep., 327; Kinne v. Lant, 68 Fed. Rep., 436; Hale v. Wharton, 73 Fed. Rep., 739; Central Trust Co. v. Milwaukee Railway Co., 74 Fed. Rep., 442; Roschynialski v. Hale, 201 Fed. Rep., 1017; Stratton v. Hughes, 211 Fed. Rep., 557; Feister v. Hulick, 228 Fed. Rep., 821.) There has been a division of opinion in the State courts upon whether the privilege is limited to actual arrest upon civil process without extending to exemption from ordinary civil process, but the tendency has been constantly to enlarge the right of privilege so as to afford full protection to suitors and witnesses from all forms of process of a civil character during their attendance before any judicial tribunal, and for a reasonable time in going and returning. This doctrine seems to be established by the weight of authority.