Boston & R. Elec. St. Ry. Co. v. Bemis Car-Box Co.

• Decision Date: 10 November 1899
• Docket Number: 292.
• Citation: 98 F. 121
• Parties: BOSTON & R. ELECTRIC ST. RY. CO. v. BEMIS CAR-BOX CO.
• Court: U.S. Court of Appeals — First Circuit

98 F. 121

BOSTON & R. ELECTRIC ST. RY. CO. v. BEMIS CAR-BOX CO.

No. 292.

United States Court of Appeals, First Circuit.

November 10, 1899

Francis Rawle and Edward Wetmore, for petitioner.

Arthur v. Briesen and Antonio Knauth, for defendant.

Before PUTNAM, Circuit Judge, and ALDRICH and BROWN, District Judges.

PUTNAM Circuit Judge.

This petition arose out of a bill brought in the circuit court for the district of Massachusetts on July 2, 1890, by the Bemis Car-Box Company, the present respondent, against the Boston &amp Revere Electric Street-Railway Company, the present petitioner, for the infringement of a patent for an invention issued to Sumner A. Bemis on the 5th day of April, 1881. Such proceedings were had on the bill that on August 10, 1896, an interlocutory decree was entered in favor of the complainant for a master and an injunction, from which an appeal was taken to this court, where on April 21, 1897, the decree of the circuit court was affirmed on its merits (25 C.C.A. 420 80 F. 287); and such further proceedings ensued that a final decree against the respondent in that case was entered in the circuit court on May, 1, 1899. The petition was filed in the interest of the J. G. Brill Company, which corporation manufactured the infringing device, and was concerned in the defense of the suit in the principal cause, if it did not entirely assume it. The petition avers that in October, 1898 the J. G. Brill Company received from an unexpected source information which proved to be the clew to a very large amount of evidence of prior public use, shown by the petition; being mainly, if not entirely, that of prior public use by the inventor for more than two years before his patent was applied for. The prayer of the petition is that the petitioner may have permission to apply to the circuit court for leave to file a bill of review to bring forward the newly-discovered evidence referred to, and to have the principal cause reheard.

Leave was duly granted by this court to file the petition and the proofs accompanying the same, and a summons to show cause was issued to the Bemis Car-Box Company, and it answered and filed its affidavits in reply. Also, in accordance with leave granted, briefs for both the petitioner and the respondent were filed; and, afterwards, by special order, the cause was orally argued at this term. The practice in matters of this character was quite fully explained by this court in Re Gamewell Fire-Alarm Tel. Co., 20 C.C.A. 111, 73 F. 908, by an opinion passed down on April 23, 1896. In Post v. Electrical Co., 32 C.C.A. 151, 89 F. 1, 5, in an opinion passed down on June 14, 1898, we gave a summary of all the cases where questions of this character have been raised before us.

It is clear that, after the petitioner received the clew to the new evidence to which the petition relates, it proceeded with great diligence in perfecting its case and bringing it before this court.

The bill in the original cause contained the usual allegation that the alleged invention had not been in public use or on sale for more than two years prior to the application for the patent, and the answer contained a formal denial of that allegation. No proofs, however, were taken in the original cause with reference to that allegation; so that, so far as it was concerned, the case stood on the presumption raised by the granting of the patent, and no practical issue was made with reference thereto. There is no indication whatever in the record in the principal cause that the petitioner justified the use of the patented device on the issue of alleged prior public use. The question has been made whether, ordinarily, equity requires that a bill of review should be permitted to be filed on a new issue which might have been presented in the principal cause, but was not. On general principles, it would seem that there would be no equity in this behalf, unless in very exceptional cases.

In Young v. Keighly, 16 Ves. 348, 354, decided in 1809, Lord Chancellor Eldon remarked that the decisions allowing bills of review are not applicable where the original cause did not admit the introduction of the evidence, as not having been put in issue. Mr. Justice Story, in Dexter v. Arnold, 5 Mason. 303, 313, Fed.Cas.No. 3,856, apparently regarded this as the general rule. Nevertheless the later authorities do not permit a formulated rule of this character; and, as no fixed formula can ever be laid down, limiting equity as to relief against error, fraud, or misfortune, all that can be said in this behalf is that, under some circumstances, the fact that a petitioner for review was originally contented to rest his case on certain issues ought to bar him from calling on equity to aid him to present new issues after he has been defeated as the result of protracted litigation in the principal cause. The petition in this case does not deny that when the J. G. Brill Company, in whose interest it is presented, commenced to manufacture the infringing device, it had been informed of the existence of the complainant's patent. On the contrary, it had a patent of its own, relating to the same subject-matter, issued on December 31, 1889, under which it claimed the right to manufacture the infringing device; and, both on this account and on account of its extensive interest in the industry, it presumably had full knowledge of the condition of the art, including the patent in suit. It thus appears that the J. G. Brill Company was content to proceed to manufacture the infringing device, relying solely on the defenses stated; and, in equity, it ought to stand there until it presents considerations which appeal with especial force to the chancellor's conscience.

Aside from the question of diligence, which we will consider later, there arises the question of the materiality of the new proofs offered by the petitioner. The rule as stated in Story, Eq. Pl. (10th Ed.) Sec. 413, is to the effect that the new matter should be such as, if known, 'might probably have produced a different determination'; and it is also laid down in practically the same language in Daniell, Ch. Prac. (6th Am. Ed.) *1577. The rule on this point is stated quite as favorably for the petitioner in Re Gamewell Fire-Alarm Tel. Co., 20 C.C.A. 111, 73 F. 908, as anywhere. It is said there, at page 913, that the circumstances in that case were such that there would be 'a reasonable probability that the proofs, if they sustained the allegations of the petition, would require reconsideration from us if the case should come here again.' In the present case the new issues, if sustained, would clearly require a reversal of the judgment in the principal suit. In the case last cited, although it was said that the question of materiality is usually for the appellate court, yet the proofs were of such a complicated character that they required investigation according to the ordinary methods of judicial proceeding, which could not be had in this court on affidavits. In that particular the case at bar corresponds fully. The issue which the new proofs raise, if determined in favor of the petitioner, would, as already said, necessarily lead to a reversal of the judgment already entered; but the proofs now brought to our attention are so contradictory, cover so large a field, and relate to matters so long gone by, that it would be impossible for us to sift out the case properly on mere affidavits. It is therefore plain that if the petitioner can be permitted to raise this new issue, and has not been guilty of laches, the new proofs now offered should have an investigation in the court below.

With reference to the nature and degree of diligence which must be shown in a petition of this character, Lord Bacon's rule, as given by the supreme court in Purcell v. Minor, 4 Wall. 519, 521, requires that the new proof 'could not possibly have been used at the time when the decree was passed. ' Story, Eq. Pl. (10th Ed.) Sec. 414, says that it must be such as the party, by the use of reasonable diligence, could not have known. The necessity of enforcing this rule strictly, with reference to anticipatory matter, was stated in Re Gamewell Fire-Alarm Tel. Co., already cited; and the new defense now sought to be raised is of the same family.

In Young v. Keighly, 16 Ves. 348, 354, Lord...