Bowers v. EJ Rose Mfg. Co.

• Decision Date: 01 June 1945
• Docket Number: No. 10742.,10742.
• Citation: 149 F.2d 612
• Parties: BOWERS et al. v. E. J. ROSE MFG. CO. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

149 F.2d 612 (1945)

BOWERS et al. v. E. J. ROSE MFG. CO. et al.

No. 10742.

Circuit Court of Appeals, Ninth Circuit.

April 21, 1945.

As Amended on Denial of Rehearing June 1, 1945.

F. H. Bowers, of Roseville, Cal., and Mac A. Propp, of Los Angeles, Cal., for appellants.

J. Calvin Brown and Paul G. Breckenridge, both of Los Angeles, Cal., for appellees E. J. Rose Mfg. Co. and Electrical Products.

C. A. Miketta and Donald J. Dunne, both of Los Angeles, Cal., for appellees Robert A. Fischer, Fischer Corporation, and A. S. Aloe Co.

Before DENMAN, STEPHENS, and BONE, Circuit Judges.

DENMAN, Circuit Judge.

This is an appeal by plaintiffs below, suing for infringement of patent No. 2,123,709, from (a) a summary judgment dated May 25, 1943, dismissing appellants' complaint as to appellee E. J. Rose Manufacturing Company of California, hereafter called Rose; (b) a summary judgment dated June 8, 1943, dismissing appellants' complaint as to Fischer Corporation, Robert A. Fischer and A. S. Aloe Company, hereafter called Fischers; and (c) an order of date August 16, 1943, denying appellant's motion filed on that date to set aside the judgments and permit them to proceed with the cause.

Concerning the motion to set aside the judgments, the affidavits supporting it state a strong case for setting them aside on the ground of excusable neglect. However, nothing is presented for our action, since the order made after judgment denying such relief is not a final order from which an appeal may be taken. Hicks v. Bekins Moving & Storage Co., 9 Cir., 115 F.2d 406; Republic Supply Co. v. Richfield Oil Co., 9 Cir., 74 F.2d 909, 910. The affidavits on the motion to set aside the judgments are no part of the record on the appeal from the judgments. The appeal from the order of August 16, 1943, is dismissed.

The Judgment of Dismissal as to Rose.

It appears that at the time of the motion for the judgment Rose had not answered appellants' complaint, thereby raising no issue as to the validity of appellants' claimed patent¹ and its infringement. Since the complaint stated a cause of action and no issue was joined, the case was not in a position for a summary judgment on the merits of the patent's validity or its infringement. The judgment of dismissal if valid must be supported on some other ground.

The judgment as to Rose is sought to be supported by a contention that Rose served Bowers as appellant Bristow's attorney of record and on appellant Bowers himself, who appeared propria persona, an order of that court that appellants file within 30 days from January 15 a bill of particulars, and that appellants failed to respond to the court's order. Because of this failure to file the bill of particulars, Rose claims that the court was entitled to dismiss the complaint under Rule 12(e) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, respecting orders for bills of particulars, providing "* * * If the motion is granted and the order of the court is not obeyed within 10 days after notice of the order or within such other time as the court may fix, the court may strike the pleading to which the motion was directed or make such order as it deems just. A bill of particulars becomes a part of the pleading which it supplements."

Regarding service by mail, Rule 5(b) provides "* * * Service upon the attorney or upon a party shall be made by delivering a copy to him or by mailing it to him at his last known address or, if no address is known, by leaving it with the clerk of the court. * * *" (Emphasis supplied.)

The affidavit of Rose's attorney concerning the service of the court's order does not give the date of the claimed service by mail nor state that the address to which the order was mailed was the "last known address." It alleges no more than

"* * * Order is attached to the Order to Show Cause; that a true and correct copy of the Order of the Court of January 7, 1943, was duly served upon the Plaintiffs by mailing a true and correct copy thereof, by placing a true copy thereof in an envelope addressed to the attorney of record for said Plaintiffs, and said Plaintiffs, at the Post Office address of said attorney for Plaintiffs, as follows:

Mr. F. H. Bowers Mr. Louis J. Bristow 2861 West Pico Boulevard Los Angeles, California,

by then sealing the envelope and depositing the same, with postage thereon fully prepaid, in the United States Post Office at Los Angeles, California; that more than ten (10) days has elapsed since the expiration of the time in which Plaintiffs were to furnish the Bill of Particulars demanded by Defendant, * * *."

For all the affidavit of service shows, the mailing of the court's order may have been after the expiration of the 30 days granted for the filing of the bill. Also there well may have been a later known address than that stated in the affidavit.

Since the dismissal is a default judgment based upon a failure to file a required pleading, Federal Rules of Civil Procedure Rule 12(e), supra, there must be a strict compliance with the legal prerequisites to establish the court's power to render it. Particularly is this true of the requirement for a substituted service by mail that the mailing party shall state that the address is that "last known" to him. This requirement of the rule is to prevent an unconscionable default where a once-known address is succeeded by a later one to which, the sender knows, the addressed party has moved.

Furthermore, as in equity, Federal Rules of Civil Procedure, Rule 52(a), provides "(a) Effect. In all actions tried upon the facts without a jury, the court shall find the facts specially and state separately its conclusions of law thereon and direct the entry of the appropriate judgment; and in granting or refusing interlocutory injunctions the court shall similarly set forth the findings of fact and conclusions of law which constitute the grounds of its action. * * *"

There is no finding of the court of the ultimate fact upon which the default judgment is based — that is, that its order was served upon appellants by mailing a copy of it to them addressed to their last known address on a certain day and that appellants failed to comply with the order in the time required. The judgment of May 25, 1943, dismissing the complaint as to Rose is reversed.

The Judgment as to Fischers.

The denials of Fischers' answer to appellants' complaint placed in issue the following facts:

(1) Whether plaintiffs were assignees of the patent No. 2,123,709 for a therapeutic light ray apparatus;

(2) Whether the patent on its face was void "because the specification and claims do not disclose or describe the purported invention in such clear, full and exact manner as to permit others to practice the alleged invention, and fail to teach how, in what manner, by what means and under what conditions the purported invention may be constructed and operated and the purported results obtained;"

(3) Whether the patentees had made a proper disclaimer of the claims alleged to be infringed;

(4) Whether the claimed patent was for an...