82 F. 916 (D.Mass. 1897), 256, Beach v. Hobbs

Docket Nº:256.
Citation:82 F. 916
Party Name:BEACH v. HOBBS et al.
Case Date:August 23, 1897
Court:United States Courts of Appeals, Court of Appeals for the First Circuit

Page 916

82 F. 916 (D.Mass. 1897)



HOBBS et al.

No. 256.

United States Circuit Court, D. Massachusetts.

August 23, 1897

Page 917

John Dane, Jr., for complainant.

Edward S. Beach, for defendants.

PUTNAM, Circuit Judge.

The patent involved in the litigation purports to cover an improvement in machines for attaching stays to the corners of boxes. The specification clearly describes the main feature claimed to be covered by the patent, so far as we are concerned with it, as follows:

'It has been customary heretofore, in making paper or strawboard boxes, to apply a stay or fastening strip over the joints at the corners of the boxes, which strip is pasted down on the outside of the box, or is folded over the edge of the box, and secured by paste, both outside and inside of the corner; and such work, as far as I am aware, has heretofore been done by hand. My invention relates to a machine for doing this work.'

In another part of the specification the patentee explains that, when the stay is simply placed against the exterior surface of the box corner, and not turned in or over the edge, the device may be simplified; but it is not necessary to explain this in detail. The claims in issue are 1, 2, 3, and 6, as follows:

'(1) The combination, with opposing clamping dies having diverging working faces, of a feeding mechanism constructed to deliver stay strips between said clamping dies, and a pasting mechanism for rendering adhesive the stay strips, said clamping dies being constructed to co-operate in pressing upon interposed box corners the adhesive stay strips, substantially as described.

'(2) The combination, with opposing clamping dies having diverging working faces, said clamping dies being arranged to co-operate in pressing adhesive fastening strips upon interposed box corners, a feeding mechanism constructed to feed forward a continuous fastening strip, and a cutter for serving the said continuous strip into stay strips of suitable lengths, substantially as described.

'(3) The combination, with opposing clamping dies having diverging working faces, said clamping dies being arranged to co-operate in pressing an adhesive fastening strip upon the corner of an interposed box, a feeding mechanism constructed to feed between the dies a continuous fastening strip, a pasting mechanism for applying adhesive substance to the strip, and a cutter for severing the strip into stay strips of suitable lengths, substantially as described.'

'(6) The combination of opposing clamping dies having diverging working faces constructed to co-operate in pressing an adhesive stay strip upon an interposed box corner, one of said clamping dies being constructed to act with an elastic or yielding pressure, to enable the dies to operate upon box corners of different thicknesses, substantially as described.'

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The respondents set up by their own enumeration 17 specific defenses. We have given each of them due consideration. If, however we should state and fully elaborate each of them, the opinion we would pass down would be unbearable, but if we omit reference to any of them it will become the consideration of those omitted is rendered unnecessary by our conclusions with reference to other defenses, or because they have been fully disposed of in the previous litigation which has been brought to our attention.

The patent in issue was thoroughly litigated in a suit commenced in the Second circuit against alleged infringers who were other than the respondents in this case, and who are not in privity with them. In the circuit court the judgment was rendered by Judge Coxe on a final hearing on bill, answer, and proofs, and an elaborate opinion was filed by him, which will be found in Beach v. Machine Co., 63 Fed .597. The case was also thoroughly discussed on appeal in an opinion drawn by Judge Lacome, entitled on appeal as Manufacturing Co. v. Beach, 18 C.C.A. 165, 71 F. 420. The same appeal is also reported in 35 U.S. App. 667. In the court of appeals the proceeding is described as an appeal from an interlocutory decree, but by this is intended the usual decree for an injunction and an accounting, rendered after a hearing on bill, answer, and proofs, as we have already explained. There were in issue claims 1, 2, and 3, and also some other claims which are not in issue here; but claim 6 was not considered in that litigation.

Under these circumstances, it is necessary, first of all, that we should determine the effect to be given to the legal proceedings in the Second circuit. So far as a question of that nature appertains to issues made on applications for preliminary or temporary injunctions, the law is well settled, as stated by the court of appeals for this circuit in Bresnahan v. Leveller Co., 19 C.C.A. 237, 72 F. 920, 921, and in the Second Circuit in New York Filter Manuf'g Co. v. Niagara Falls Waterworks Co., 26 C.C.A. 252, 80 F. 924, 929. That, however, does not determine the rule applicable to cases on final hearing, where parties responded are not estopped by the prior litigation, and are entitled to have their rights determined strictly in accordance with the law and the facts as presented by them. So far as any proposition may be fully presented to the court of appeals in any circuit, and determined by it, resulting in a rule which is, and ought to be, of general application, especially when it involves federal questions, a condition of adjudications which would defeat uniformity throughout the United States would clearly disappoint the contemplation of congress in establishing those tribunals. It certainly was not the expectancy of congress that the establishment of those courts would destroy the general uniformity of adjudications in the federal tribunals touching general principles of law, and especially touching federal questions, which has heretofore existed; nor was it its purpose to create several centers, for the determination of that class of questions, which would take on a local character, as is the fact with reference to the various state tribunals. As was said by the circuit court of appeals for this circuit in Beal v. City of Somerville, 1 C.C.A. 598, 50 F. 647, 652, the circuit courts of appeal

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must maintain themselves as tribunals of final jurisdiction, notwithstanding the possibility that cases disposed of by them may in some form reach the supreme court. In view of this fact, a decision of the circuit court of appeals in any circuit, so long as it remains unappealed from, and so long as the supreme court has not issued its writ of certiorari to re-examine it, must be regarded as having more effect than that ordinarily given to even the highest state tribunals, or to any court of merely concurrent jurisdiction, no matter how great its learning. There seems to be no method of maintaining the necessary uniformity of the law with reference to general questions, especially federal questions, unless the mature and solemn judgments of a circuit court of appeals in any circuit are accepted as authoritative declarations of the law, subject only to such criticisms on the score of oversight or evident mistake as would apply to a judgment of the circuit court of appeals in the particular circuit where the litigation then under determination may be pending. These observations must, of course, be limited to what was necessarily determined, and they cannot safely be made to include what was not strictly essential to what was thus determined. These considerations have a special importance as applied to a solemn and well-considered judgment of any circuit court of appeals with reference to a patent for an invention issued by the United States, when the state of the proofs remains substantially the same, in view of the reluctance of the supreme court to issue writs of certiorari in causes of this character, involving mainly questions of fact; otherwise such patents, although intended by statute to have effect throughout the whole country, would, for practical purposes, be territorially limited, and would be of effect only in portions thereof, and practically invalid in other portions. It is also to be borne in mind that there is no serious danger that the courts in any circuit, by following the decisions of the circuit courts of appeal in other circuits, would perpetuate any error, because of the power vested in the supreme court to rectify the same by issuing its writ of certiorari. We are not, however, required to definitely determine the effect of these considerations in the case at bar, because, to the extent that the court of appeals for the Second circuit has reached necessary conclusions in reference to the patent at issue, they meet our approval so far as they concern the condition of the case as it stands before us. 1

In Green v. City of Lynn, 55 F. 516, 518, we had occasion to consider in what way the findings and decisions of any court of authority with reference to a particular patent, on a final hearing on bill, answer, and proofs, can be made available on a like final hearing in another court, where the respondents are not the same, and are not conclusively estopped by the prior determination. That new parties litigant are entitled to have their facts carefully scrutinized, with a view of determining whether or not they present a different case from that adjudicated in the prior litigation, is well illustrated by

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Andrews v. Hovey, 123...

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