Universal Oil Products Co v. Root Refining Co

• Decision Date: 10 June 1946
• Docket Number: Nos. 48 and 64,s. 48 and 64
• Parties: UNIVERSAL OIL PRODUCTS CO. v. ROOT REFINING CO. (two cases)
• Court: U.S. Supreme Court

328 U.S. 575

66 S.Ct. 1176

90 L.Ed. 1447

UNIVERSAL OIL PRODUCTS CO.

v ROOT REFINING CO. (two cases).

Nos. 48 and 64.

Argued Oct. 15, 1945.

Decided June 10, 1946.

Rehearing Denied Oct. 14, 1946.

See 67 S.Ct. 24.

Mr. Ralph S. Harris, of New York City, for petitioner.

Mr. Thorley Von Holst, of Chicago, Ill., pro se and on behalf of Skelly Oil Co. et al., as amicus curiae by special leave of Court.

Mr. Justice FRANKFURTER delivered the opinion of the Court.

Petitioner, Universal Oil Products Company, is a patent-holding and licensing company. In 1929 and 1931, it brought suits for infringement against the Winkler-Koch Engineering Co. and the Root Refining Company, respectively. The suits were consolidated, the validity of the patents sustained, and decrees for their infringement entered. Universal Oil Products Co. v. Winkler-Koch Engineering Co., D.C., 6 F.Supp. 763. The Circuit Court of Appeals for the Third Circuit, in an opinion by Judge J. Warren Davis, affirmed the decrees, 78 F.2d 991, and this Court, in October, 1935, denied certiorari. Root Refining Co v. Universal Oil Products Co., 296 U.S. 626, 56 S.Ct. 149, 80 L.Ed. 445. Both before and after the decision in the Root case, Universal started similar infringement suits against other oil companies. Universal invoked the Root decisions as res judicata against some of these companies. It maintained that, although these companies had not been parties of record in the Root suit, they were members of a 'patent l ub,' to which Root belonged and which had been formed to pool money for the defense of any member of the 'club' in an infringement suit against it, and that the Root case had been defended by the attorneys for the 'patent club.' Universal contended that these circumstances made the other oil companies substantial parties to the Root litigation and as such bound by its outcome.

On June 2, 1941, during the pendency of these latter cases, attorneys who had represented Root and were representing the other oil companies advised the attorneys of the petitioner that on June 5, 1941, they would bring to the attention of the judges of the Third Circuit Court of Appeals the circumstances surrounding the appeal in the Root case, and, more particularly, the relations of one Morgan S. Kaufman to the outcome of that appeal, and invited petitioner's attorneys to attend. At the hearing on June 5, the moving attorneys suggested, in substance, that testimony taken at the trial of Judge Davis pointed to bribery of Judge Davis by Kaufman to secure a decision favorable to Universal in the Root appeal. They urged an investigation of the questionable features surrounding affirmance of the Root decree, but expressed doubt as to the capacity in which they could formally make such a request of the Court. Their difficulty was due to the fact that after this Court had denied certiorari in the Root case, Root had settled its controversy with Universal and was unwilling to disturb the agreement by an attempt to reopen the law suit. The other oil companies who were in litigation with Root insisted that they were neither formal nor substantial parties to the Root case. And so their attorneys, who were the attorneys in the Root litigation and the moving attorneys in the present proceedings, could not move on their behalf to have the Root decree vacated. But these other oil companies had an interest in the Root decree since it might be used in pending cases to their disadvantage. Universal offered to consent to a reargument of the Root case and to preserve to the Root Company the benefits of the existing agreement, even if Universal should prevail upon reargument. Throughout these proceedings Universal stood ready to carry out this offer, but nothing ever came of it, presumably because Root was not represented at these hearings and the other oil companies were not parties of record in the original litigation.

The dilemma of the attorneys who initiated these proceedings to set aside a fraudulent judgment but could not speak for any client prepared to come before the court as a party in interest, was resolved by a suggestion from the presiding judge of the Circuit Court of Appeals. The suggestion was that the court would accept the services of these attorneys as amici curiae. Accordingly, they offered themselves in that role. Upon their acceptance as such by the court they asked for the appointment of a master to investigate the Root appeal. while they thus proceeded as amici they stated quite candidly that they were also concerned with the interests of their clients, the oil companies in pending litigation. As a matter of law, however, their status was only that of amici, for their clients did not subject themselves to the court's jurisdiction. The relation of these lawyers to the court, after it recognized them as amici, remained throughout only that of amici.

A master was appointed and he conducted an extensive investigation. He examined records in the possession of the United States Attorney for the Southern District of New York, the records of proceedings before a Philadelphia grand jury, bank records, and various statements of interested parties. From this mass of material, he selected those documents which he deemed appropriate for submission to the inspection of the amici and of counsel for Universal. Witnesses were also heard and petitioner was given the right to cross-examine. But the investigation was not governed by the customary rules of r ial procedure. Petitioner's counsel duly excepted to the manner in which the investigation was being conducted, 'if it were to involve any property rights of our...