Deering, Milliken & Co. v. TEMP-RESISTO CORPORATION

• Decision Date: 15 January 1959
• Citation: 169 F. Supp. 453
• Parties: DEERING, MILLIKEN & CO., Inc., Plaintiff, v. TEMP-RESISTO CORPORATION and Samuel Kaplan & Sons, Inc., Defendants, and Acker & Jablow, Inc., Charles W. Carvin Co., Inc. and N. Erlanger Blumgart & Co., Inc., Additional Defendants on Counterclaims.
• Court: U.S. District Court — Southern District of New York

169 F. Supp. 453

DEERING, MILLIKEN & CO., Inc., Plaintiff, v. TEMP-RESISTO CORPORATION and Samuel Kaplan & Sons, Inc., Defendants and Acker & Jablow, Inc., Charles W. Carvin Co., Inc. and N. Erlanger Blumgart & Co., Inc., Additional Defendants on Counterclaims.

United States District Court S. D. New York.

January 15, 1959.

Townley, Updike, Carter & Rodgers, New York City, Stuart N. Updike, P. John Picinich, New York City, of counsel, for plaintiff.

Hays, Podell, Algase, Crum & Feuer, New York City, Edward Costikyan, Simon H. Rifkind, Mortimer Feuer, New York City, of counsel, for defendants.

FREDERICK van PELT BRYAN, District Judge.

This is a motion for an order taxing plaintiff's costs up to the date of a partial judgment in plaintiff's favor entered in this action on February 19, 1958.

The costs sought to be taxed amount to the sum of $40,730.62, most of which consists of one-half of the agreed fees of a special master ($33,785.29) and one-half of the reporter's fees for transcripts of the hearings before the master ($5,344.33). Defendants raise no question as to the correctness of the items or the amounts in the bill of costs sought to be taxed. However, they urge that the motion should be denied (1) because it is prematurely made, and (2) since it seeks to tax costs before the Court instead of before the clerk the motion is contrary to the intendment of Rule 54(d), F.R.Civ.P., 28 U.S.C.A.

These are two actions for patent infringement seeking an injunction and damages which were consolidated by stipulation. The defendants' amended answer asserted counterclaims against the plaintiff and against additional defendants named in the counterclaims alleging unfair competition and violation of the anti-trust laws. Pursuant to a stipulation approved by the Court the parties agreed that a special master should be designated by the Court to hear and render an advisory report upon the issues and that the costs and expenses of the reference should be borne by the losing party, except that no part of such costs and expenses should be borne by the additional defendants on counterclaims. Orders entered upon consent appointed the special master, fixed his fees and provided that such fees were to be paid currently one-half by plaintiff and one-half by defendants, with final adjustment to be made in accordance with the prior stipulation.

Hearings were held before the special master, pursuant to the order of reference, for some five months. The special master then filed his report. After motion by defendants to set aside his findings of fact and conclusions of law the cause was recommitted to him for additional findings of fact. Additional hearings were held and the special master filed his findings of fact on recommittal on July 1, 1957.

In an opinion dated January 22, 1958 (D.C., 160 F.Supp. 463) Judge Dawson overruled exceptions to the report of the special master and approved his findings. He held that the patents in suit were valid, that they had been infringed by defendants and that plaintiff was entitled to a permanent injunction against further infringement. He also held that the defendants had failed to establish their counterclaims against the plaintiff and the additional defendants for alleged unfair competition and violation of the anti-trust laws and that the counterclaims should be dismissed. He directed that the decree to be entered should provide for the payment of taxable costs to the plaintiff and the additional defendants and that the issue of damages should be referred to a master for determination.

On February 19, 1958, judgment was entered in accordance with the opinion which provided, among other things, that "Plaintiff shall be entitled to its taxable costs against defendants Temp-Resisto Corporation and Samuel Kaplan & Sons, Inc., jointly and severally, including the costs and expenses of the reference to William H. Davis, Esq., as Special Master, * * * and plaintiff shall have judgment for the aggregate amount thereof." A special master was appointed to take testimony on the sole remaining question of damages but proceedings before him were stayed during the pendency of any appeal taken by the defendants. Such an appeal is presently pending.

The instant motion to tax costs in accordance with the judgment of February 19, 1958, followed.

The judgment of February 19, 1958, finally determined the issues as to alleged infringement and as to alleged unfair competition and violation of the antitrust laws in favor of the plaintiff and against the defendants. The decree expressly finds that "there is no just reason for delay in entering a final judgment upon all the claims for relief presented in this action except with respect to the amount of damages to which plaintiff and the additional defendants on counterclaims are entitled * * *". It further provides that the plaintiff "shall be entitled to its taxable costs * * * and plaintiff shall have judgment for the aggregate amount thereof".

Judge Dawson refused to suspend "the effectiveness of this decree, except as to the issuance of injunctions, and any accounting proceedings" as defendants requested, and stayed only the accounting proceedings.

There appears to be no reason for delaying the taxation of costs to which plaintiff is entitled under the decree which was entered pending the proceeding...