Brown v. Lanyon Zinc Co.

• Citation: 179 F. 309
• Decision Date: 03 May 1910
• Docket Number: 2,800.
• Parties: BROWN et al. v. LANYON ZINC CO.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

179 F. 309

BROWN et al. v. LANYON ZINC CO.

No. 2,800.

United States Court of Appeals, Eighth Circuit.

May 3, 1910

Syllabus by the Court.

Propositions of law once considered and decided by an appellate court in a given case are not open to reconsideration in that court upon a second appeal in the same case, and this although the first appeal was from an interlocutory decree.

Findings of a master concurred in by the trial court are regarded as presumptively correct, and must be permitted to stand, unless some obvious error has intervened in the application of the law or some serious or important mistake has been made in the consideration of the evidence.

In an accounting for profits received by an infringer, where the infringement is not of an entire machine but only of an improved feature thereof, the recovery must be restricted to such portion of the profits derived from the entire machine as arose from the patented feature.

In ascertaining or measuring the profits recoverable upon an accounting for an infringement, the true standard of comparison is that device or appliance which was open to the defendant, and, next to the plaintiff's invention, could have been most advantageously used in the place of that invention at the time of the infringement.

Douglas Dyrenforth (William B. Davies and Lysander Hill, on the brief), for appellants.

John H Atwood (C. E. Benton, on the brief), for appellee.

Before SANBORN and VAN DEVANTER, Circuit Judges, and WILLIAM H MUNGER, District Judge.

VAN DEVANTER, Circuit Judge.

This suit is grounded upon the infringement by the appellee, the defendant in the Circuit Court of claim 1 of letters patent No. 471,264, granted to Horace F. Brown, March 22, 1892, upon an application filed August 14, 1891, for an improvement in ore-roasting furnaces, the improvement consisting of a supplemental chamber, at the side of the main roasting chamber and separated therefrom by a slotted wall, with mechanism in such supplemental chamber whereby the rabbles for stirring the ore in the main chamber can be operated through the slot in the separating wall without subjecting such operating mechanism to the direct action of the heat dust, and fumes. The nature and history of the suit are shown with such fullness in the opinions of this court given on three prior appeals (Lanyon Zinc Co. v. Brown, 53 C.C.A. 354, 115 F. 150; 56 C.C.A. 448, 119 F. 918; 64 C.C.A 344, 129 F. 912) that much that otherwise would need to be stated may be omitted. See, also, Metallic Extraction Co. v. Brown, 43 C.C.A. 568, 104 F. 345; Id., 49 C.C.A. 147, 110 F. 665. In these opinions the validity of the claim in suit was sustained. Such of the defendant's furnaces as were constructed according to letters patent No. 532,013 granted to Alfred Ropp, January 1, 1895, upon an application filed February 19, 1894-- that is, with the supplemental chamber located underneath, instead of at the side of, the main roasting chamber-- were held to infringe that claim, the difference in construction being held to be within the range of mechanical equivalents. Such of the defendant's furnaces as were constructed according to letters patent No. 691,112, granted to Joseph P. Cappeau, January 14, 1902, upon an application filed April 20, 1901-- that is, with the operating mechanism located, not in an inclosing supplemental chamber but in an open or uninclosed space underneath the main roasting chamber-- were held not to infringe, because the court was of opinion that the terms of the claim in suit were such as to make a supplemental chamber for housing the rabble operating mechanism an essential element of the invention; and the Circuit Court's decree permanently enjoining the defendant from continuing its infringement and ordering an accounting in respect thereof was affirmed. The present appeal is from the final decree entered upon the accounting.

We are requested to reconsider our prior ruling that no infringement resulted from the use of the Cappeau type of furnace, with the rabble operating mechanism in an open or uninclosed space underneath the main roasting chamber, but this we may not do. That ruling turned upon the interpretation of the claim in suit and is now a part of the law of the case, whether it was right or wrong. It was adhered to after due consideration of a timely petition for a rehearing, and the Circuit Court, as in duty bound, has respected and enforced it in the subsequent proceedings. True, it was made upon an appeal from an interlocutory decree granting an injunction, but that did not render it less obligatory upon the Circuit Court, and does not except it from the settled rule that propositions once decided by an appellate court are not open to reconsideration in that court upon a subsequent appeal or writ of error.

Smith v. Vulcan Iron Works, 165 U.S. 518, 525-526, 17 Sup.Ct. 407, 41 L.Ed. 810; In re Potts, 166 U.S. 263, 267, 17 Sup.Ct. 520, 41 L.Ed. 994; United States v. California, etc., Land Co., 148 U.S. 31, 38, 13 Sup.Ct. 458, 37 L.Ed. 354; In re Sanford Fork & Tool Co., 160 U.S. 247, 255, 16 Sup.Ct. 291, 40 L.Ed. 414; Illinois v. Illinois Central R.R. Co., 184 U.S. 77, 90-93, 22 Sup.Ct. 300, 46 L.Ed. 440; Bissell Carpet Sweeper Co. v. Goshen Sweeper Co., 19 C.C.A. 25, 40, 72 F. 545, 560; Burns v. Cooper, 82 C.C.A. 300, 153 F. 148; Crotty v. Chicago Great Western Ry. Co., 95 C.C.A. 91, 169 F. 593; Messinger v. Anderson, 96 C.C.A. 445, 171 F. 785. If we were at liberty to entertain the present request, we equally would be at liberty to reconsider our ruling on the first appeal, in respect of the infringement by the use of the Ropp type of furnace, but that this may not be done was settled when the case was here on the second appeal.

Recognizing, however, that a proposition once decided is within the rule just stated only when the facts properly controlling its decision on the subsequent appeal or writ of error are substantially the same as before (Barney v. Winona, etc., R.R. Co., 117 U.S. 228, 231, 6 Sup.Ct. 654, 29 L.Ed. 858; Crotty v. Chicago Great Western Ry. Co., supra), we turn to another contention of the appellants, namely, that the present record, differing from the one before us at the time of the prior ruling, discloses that in the defendant's furnaces of the Cappeau type the operating mechanism is in what is virtually an inclosed supplemental chamber, and is not in an open or uninclosed space.

Subsequently to our prior ruling, and upon the complainants' application, the Circuit Court modified the order of reference to the master so as to require him, in the course of the accounting, to receive evidence as to whether or not, as was then charged by the complainants, the defendant's Cappeau furnaces were constructed with a cellar-like excavation thereunder, containing the rabble operating mechanism, and with walls of earth or masonry so surrounding the excavation as to make it substantially an inclosed supplemental chamber, and to receive evidence of the profits derived by the defendant from the use of any furnaces so constructed, and to report separately his conclusions thereon. It is upon the evidence so taken that the complainants ground their contention last stated. The master, however, reached the conclusion that the contention was not sustained by the evidence, and his conclusion was approved by the Circuit Court. Of course, these concurring findings are presumptively correct and must be permitted to stand, unless some obvious error has intervened in the application of the law, or some serious or important mistake has been made in the consideration of the evidence. Moffat v. Blake, 75 C.C.A. 265, 145 F. 40; Houck v. Christy, 81 C.C.A. 602, 152 F. 612. The record does not disclose any such error or mistake. On the contrary, it shows that the facts relating to the cellar-like excavations are these: Furnaces of another type, set well into the ground, formerly occupied the places now occupied by those of the Cappeau type, and the excavations resulted from the removal of the former. Instead of filling the excavations, supporting posts of greater height than otherwise would have been required were placed under the Cappeau furnaces.

The excavations are both longer and wider than the furnaces and the floors or hearths of the latter are above the level of the walls of the excavations and the adjacent earth, enough so to permit the rabble operating carriages beneath the furnaces to move on rails actually placed above that level. In short, the rabble operating mechanism is above the excavation and in an open or uninclosed space which permits a free movement of the air and ready access to such mechanism. It therefore must be held that the facts relating to the use of the Cappeau furnaces are substantially the same on this appeal as on the prior one and that the ruling then made is controlling.

We now come to the accounting in respect of the infringement by the use of furnaces of the Ropp type between March 6, 1899, and September 7, 1902, when the defendant was enjoined from longer using them. The chief complaint directed against the accounting, and the only one which merits particular mention, is that an erroneous standard of comparison was used in measuring the profits realized by the defendant from this infringement.

At the outset it is well to observe that the invention in suit did not cover the entire furnace of the Ropp type, as used by the defendant, but only a part of it consisting of the supplemental chamber wherein the rabble operating mechanism was housed and protected from the direct action of the heat dust, and fumes while it actuated the rabbles in the main chamber by means of an arm extended through a slot in the intervening wall or floor, and that, although the defendant's use of this...