American Foundry & Mfg. Co. v. Josam Mfg. Co.

• Decision Date: 06 September 1935
• Docket Number: No. 10215.,10215.
• Parties: AMERICAN FOUNDRY & MFG. CO. v. JOSAM MFG. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

79 F.2d 116 (1935)

AMERICAN FOUNDRY & MFG. CO. v. JOSAM MFG. CO.

No. 10215.

Circuit Court of Appeals, Eighth Circuit.

September 6, 1935.

Paul Bakewell, of St. Louis, Mo., for appellant.

Albert R. Golrick, of Cleveland, Ohio (Edwin E. Huffman, of St. Louis, Mo., on the brief), for appellee.

Before STONE and WOODROUGH, Circuit Judges, and RAGON, District Judge.

STONE, Circuit Judge.

In an earlier litigation, appellant was decreed an infringer of claims 1, 2, and 3 of O'Brien patent No. 855,017 (issued May 28, 1907) and of claims 1 to 8, inclusive, of Hirshstein No. 1,348,945 (issued August 10, 1920) — both patents being for roof drain devices. The decree therein, entered in 1922, permanently enjoined appellant from infringing the above claims of these patents. The O'Brien patent expired in 1924 and thereafter, in 1934, appellant was cited for contempt for making and selling two different drain devices (one in 1931 and the other in 1933) which appellee charged were violative of the above injunction because merely colorably different from the device covered by the above claims of the Hirshstein patent. After full hearing, the trial court determined that each of these two devices made by appellant violated the injunction decree; that appellant was guilty of contempt; and that punishment therefor should be payment of all costs, charges, counsel fees, and disbursements of appellee in connection with the contempt proceedings and also all gains, profits, and advantages realized by appellant from sales of these two devices. This appeal is from the order.

While the drain made and sold in 1931 by appellant will be discussed and disposed of hereinafter, the circumstances affecting it are such that it is of small practical importance in this immediate litigation. Very few of these 1931 drains were made and sold; the gain thereon to appellant or the harm therefrom to appellee was negligible and such making and sale were promptly discontinued upon complaint by appellee. As to the different device put out by appellant in 1933, the situation is different since appellant is claiming the right to continue the manufacture and sale of it. These two accused devices differ in construction. We will first consider the 1933, or present device.

Appellant's 1933 Drain.

The broad issue as to this drain is whether it is or is not merely "colorably" different from appellee's device as covered by claims 1 to 8, inclusive, of Hirshstein. As will be hereinafter shown, all subsequent constructions by a convicted infringer are not triable in contempt proceedings. Only where such constructions are merely "colorably" different from the enjoined device or from the patent is the issue so triable. Such constructions may turn out to be infringements, but if they are more than "colorably" different, the issue of infringement must be otherwise determined than by a contempt proceeding. Therefore, when the issue of infringement is presented in a contempt proceeding, the court must first determine whether it can properly entertain the issue in that proceeding. The propriety of the trial court's determination that it should pass upon the 1933 device in a contempt proceeding is the issue which must be first determined by this court now. This issue is determinable by measuring the facts here by the legal definition of "colorable" as understood in connection with contempt proceedings for violation of a patent infringement injunction order. It is necessary to understand and state such definition.

A patent is a governmental grant of monopoly for the making, selling, and use of a novelty (disclosed therein) as claimed by the patent. Nothing which is not novel (in a patentable sense) as disclosed in the patent is subject to such monopoly even though covered by the paper grant, and nothing having such novelty is so subject unless properly disclosed and properly claimed in the patent. The indefinite character of these limitations on the valid boundaries of any particular patent inevitably produces somewhat of vagueness as to those boundaries except as such are settled by judicial definition. Even judicial definition of such boundaries is often piecemeal because made in reference only to a particular (real or fancied) encroachment thereon. Yet with all this uncertainty, those boundaries exist from the time the patent is granted and therefore must be respected and will be enforced. Thus every outsider must, at his peril, govern his own action by his concept of the place where such boundary lies. He may come safely to its outmost edge, but he may not safely cross the line. Burr v. Duryee, 1 Wall. 531, 574, 17 L. Ed. 650; American Steel & Wire Co. v. Denning Wire & Fence Co., 194 F. 117, 123 (C. C. A. 8). If he honestly — unintentionally — trespasses, he cannot retain any profit therefrom and must make good the damage. If he intentionally trespasses, he will be punished beyond the profit and the damage. USCA, title 35, § 67. Such is the situation before it has been judicially determined that his action is a trespass — an infringement.

A decision adjudging infringement necessarily finds the particular accused device to be within the valid boundary of the patent. The decree usually carries a prohibition against further infringement — not as to any and every possible infringement, but as to the particular device found to be infringement and as to all other devices which are merely "colorable" changes of the infringing one or of the patent. This limitation of the effect of such a decree is occasioned somewhat by the indefinite character of the boundaries of a patent, but more by the character of the remedy — summary contempt proceedings — used to enforce such provisions of a decree. This is merely an application to patent injunction contempt proceedings of the general rule as to all civil contempt proceedings. Oriel v. Russell, 278 U. S. 358, 365, 49 S. Ct. 173, 73 L. Ed. 419; City of Campbell v. Arkansas-Missouri Power Co., 65 F.(2d) 425, 428 (C. C. A. 8). That rule was stated by this court to be that "when it is doubtful whether a decree of injunction has been violated, a court is not justified in punishing for contempt, either criminal or civil, for the reason that no one can say with any degree of certainty that the authority of the court needs vindication or that the aggrieved party is entitled to remedial punishment." City of Campbell v. Arkansas-Missouri Power Co., 65 F.(2d) 425, 427, 428.

The definition of "colorable" in relation to such infringement contempt proceedings is stated in California Artificial Stone Pav. Co. v. Molitor, 113 U. S. 609, 618, 5 S. Ct. 618, 622, 28 L. Ed. 1106, as follows: "Process of contempt is a severe remedy, and should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct." (Italics added.) The Court of Appeals for the Second Circuit has expressed the same definition and the procedure dependent on determination of such "colorability" as follows: "Where the alteration in the device is `merely colorable' and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the new device in proceedings for contempt for violation of the injunction. Citations omitted. But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction." Radio Corporation v. Cable Radio Tube Corporation, 66 F.(2d) 778, 782 (C. C. A. 2). Italics added. To the same effect are Better Packages, Inc., v. L. Link & Co., 68 F.(2d) 904, 906 (C. C. A. 2); Krentler-Arnold Hinge Last Co. v. Leman, 50 F.(2d) 699, 701 (C. C. A. 1); Schey v. Giovanna, 273 F. 515, 516 (C. C. A. 2); Eureka Tool Co. of Kansas v. Wire Rope Appliance Co., 265 F. 673, 674 (C. C. A. 8); Charles Green Co. v. Henry P. Adams Co., 247 F. 485, 486 (C. C. A. 2); Frank F. Smith Metal Window Hardware Co. v. Yates, 244 F. 793, 796 (C. C. A. 2); National Metal Molding Co. v. Tubular Woven Fabric Co., 239 F. 907, 908 (C. C. A. 1); Crown Cork & Seal Co. v. American Cork Specialty Co., 211 F. 650, 653 (C. C. A. 2); Rajah Auto Supply Co. v. Grossman, 207 F. 84 (C. C. A. 2); Kreplik v. Couch Patents Co., 190 F. 565, 568 (C. C. A. 1); General Mfg. Co. v. Gray, 48 F.(2d) 602, 604 (D. C. Okl.); Electro-Bleaching Gas Co. v. Paradon Eng. Co., 15 F.(2d) 854, 855 (D. C. N. Y.); Wire Rope Appliance Co. v. Eureka Tool Co., 256 F. 677, 678 (D. C. Kan.); Metropolitan Sewing Machine Corporation v. American Perfect Binder Co., 272 F. 520, 522 (D. C. N. Y.).

Under such definition of "colorable" and such outline of the proper procedure dependent thereon, the inquiry here is whether or not there is a "fair ground of doubt" as to infringement by the 1933 device of appellant — if there is such, there can be no punishment for contempt, but appellee must proceed by supplemental or original bill for infringement; if there is no such fair ground for doubt, the matter may be determined in this contempt proceeding.

The application for the citation in contempt is, substantially, merely a charge that appellant's 1933 device is only colorably different from the device found to infringe and enjoined in the decree. The response claims radical differences in the 1933 device from the infringing device and from the patent and particularly states the differences relied upon. These differences have to do with what the parties and the patent designate as the "upper member" of the patented construction. Since the device found to infringe was a "Chinese copy" of the construction shown in the patent (particularly by Fig. 1), we need devote no special attention to its description. Such is covered by the...