Carson Inv. Co. v. Calumet & Arizona Mining Co.
| Decision Date | 19 November 1928 |
| Docket Number | E-140.,No. E-139,E-139 |
| Citation | 29 F.2d 300 |
| Parties | CARSON INV. CO. et al. v. CALUMET & ARIZONA MINING CO. SAME v. PHELPS DODGE CORPORATION. |
| Court | U.S. District Court — District of Arizona |
John H. Miller, Charles S. Wheeler, Jr., both of San Francisco, Cal., John M. Zane, of Chicago, Ill., A. W. Boyken, of San Francisco, Cal., and John H. Campbell and Archie Conner, both of Tucson, Ariz., for plaintiffs.
John Mason Ross, of Bisbee, Ariz., H. A. Elliott, of Phœnix, Ariz., and Arthur A. Olson, of Chicago, Ill. (Ellinwood & Ross, of Bisbee, Ariz., of counsel), for defendant Phelps Dodge Corporation.
Cleon T. Knapp, James P. Boyle, and Harry E. Pickett, all of Douglas, Ariz. (Knapp, Boyle & Pickett, of Douglas, Ariz., of counsel), for defendant Calumet & Arizona Mining Co.
These cases, involving the same questions, were, by order of court, tried together and argued as one case. Plaintiffs filed a complaint against each of the defendants, seeking an injunction to restrain infringement of patents Nos. 1,149,495 and 1,302,307, issued to George Campbell Carson, by assignment now held by plaintiffs, and praying an accounting of damages and profits.
Both patents relate to open hearth and reverberatory furnaces.
The first patent is entitled, "Improvements in Metallurgical Furnaces." The second is entitled, "Improvements in the Construction of Roofs of Open Hearth and Reverberatory Furnaces."
The questions involved herein are not new in this judicial circuit. The Carson patents were before the District Court for the Western District of Washington in the case of Carson v. American Smelting & Refining Company, and again before the District Court of Montana in the case of Carson Investment Company et al. v. Anaconda Copper Mining Company. In the former case, hereinafter referred to as the A. S. & R. Case, a decree was entered for defendant. Carson v. American Smelting & Refining Co. (D. C.) 293 F. 771.
The Circuit Court of Appeals reversed that decree and remanded the cause for further proceedings. Carson v. American Smelting & Refining Co. (C. C. A.) 4 F.(2d) 463.
Petition for writ of certiorari was denied by the Supreme Court. American Smelting & Refining Co. v. Carson, 269 U. S. 555, 46 S. Ct. 18, 70 L. Ed. 409.
Thereafter defendant filed in the Circuit Court of Appeals a motion to vacate the decree of the lower court, which was denied, Carson v. American Smelting & Refining Co., 11 F.(2d) 764, and a petition for leave to apply to the District Court to file petition reopening the case. This petition was denied, Carson v. American Smelting & Refining Co. (C. C. A.) 11 F.(2d) 766, as was also a petition for a writ of certiorari, American Smelting & Refining Co. v. Carson, 273 U. S. 695, 47 S. Ct. 92, 71 L. Ed. 844.
In the case of Carson Investment Co. v. Anaconda Copper Mining Co., hereinafter referred to as the Anaconda Case, the District Court likewise entered a decree for the defendant, on the theory that the facts in that case which were not before the appellate court in the A. S. & R. Case called for and justified a conclusion different from that reached by the appellate court. Carson Investment Co. v. Anaconda Copper Mining Co. (D. C.) 17 F.(2d) 815.
The decree of the District Court was reversed, and the cause remanded, with directions to award injunction and to proceed in the usual manner to an accounting. Carson Investment Co. v. Anaconda Copper Mining Co. (C. C. A.) 26 F.(2d) 651.
A petition to the Supreme Court for a writ of certiorari was by that court denied October 22, 1928, 49 S. Ct. 32, 73 L. Ed. ___.
After the Circuit Court of Appeals handed down its opinion in the Anaconda Case, counsel requested permission to submit supplemental briefs "bearing upon the question of to what extent, if any, that opinion should be given effect in the disposition of the instant cases." Permission was granted, and the last brief was filed September 8, 1928.
The trial consumed approximately 30 days. The record, consisting of the reporter's notes of testimony, depositions, patents, publications, and briefs, contains several thousand pages of printed and typewritten matter, to say nothing of maps, models, drawings, photographs, etc.; and of the voluminous records in the A. S. & R. and Anaconda Cases — which were furnished to the court for its information of what there transpired.
It is not my purpose to discuss at length the proofs herein or the legal questions involved. I must content myself with a comparison of the record in the instant cases with the records of the two earlier cases, and with stating briefly my conclusions.
It is undoubtedly true, as the defendants contend, that they are not bound nor estopped by the prior litigation, since they were not parties to, nor participants in, the defense thereof, and are entitled to have their respective rights determined strictly in accordance with the law and the facts as presented by them; but it is equally true that this court is bound by the opinion of the Circuit Court of Appeals of this circuit as to the validity of the patents in suit and as to the construction of the claims thereof, if based upon evidence substantially the same as in the instant cases. What effect, then, should be given to the legal proceedings involving the patents in suit, and what rule should be observed by this court in determining the issues involved in the instant cases? The answer is to be found in the opinion of the Circuit Court of Appeals in the Anaconda Case, where reference is made to the settled rule that, "when a patent has once been sustained by an appellate court, a subordinate court, dealing subsequently with the same patent, inquires first whether the second record contains anything not before the appellate court whether mentioned in its opinion or not in the prior litigation, and, if it finds something new, inquires next whether the new matter is of such a character that it may fairly be supposed that the appellate court would have reached a different conclusion, had it been advised of its existence."
This is not a new rule. It was recognized more than a quarter of a century ago as the settled rule to be followed in patent litigation, Badische v. Klipstein (C. C.) 125 F. 543, and has been consistently followed in the cases of Conley v. Thomas (D. C.) 204 F. 93; Flat Slabs Patents Co. v. Wright (D. C.) 283 F. 345; and in many other cases, including the recent case of Rousso v. Bank (D. C.) 19 F.(2d) 247.
It will thus be seen that our own Circuit Court of Appeals has announced the rule to be followed by District Courts in this circuit in cases involving the validity of the Carson patents.
In order to enable me properly to observe the above rule, it became necessary for me to study carefully, not only the pleadings and opinions in the A. S. & R. and Anaconda Cases, but also the entire records thereof, including the evidence, both oral and documentary, as well as the greater task of studying the voluminous record in the instant cases.
A. S. & R. Case.
In this case the defendant claimed that the alleged inventions, described and claimed in the Carson patents, were invalid and void because, prior to the alleged invention of Carson, said invention was shown, described, and patented in certain letters patents of the United States and foreign countries and in certain printed publications of the United States and foreign countries, to wit:
United States patent 113,584, Charles William Siemens; United States patent 729,614, Carl C. P. DeLaval; United States patent 870,326, Frank J. Tone; United States patent 871,477, Henry Louis Charles; British patent 2,413, Charles William Siemens; British patent 14,143, Frederick Siemens; Norwegian patent 11,857, Trollhattane Elektriska Kraftaktiebolag of Stockholm; Transactions of the American Institute of Mining Engineers, vol. 51, 1915, pp. 743, 744, and 750, Coal-Dust Fired Reverberatories at Washoe Reduction Works, by Louis V. Bender; Transactions of the American Institute of Mining Engineers, vol. 51, 1915, pp. 755, 759, and 760, Coal-Dust Reverberatory Furnaces of Canadian Copper Company.
The defendant further claimed that the said Carson letters patents were invalid and void, because, prior to the alleged invention or discovery thereof by Carson, said invention was known and had been publicly used by other persons in the United States at Butte, Mont.; Salt Lake, Utah; Midvale, Utah; Douglas, Ariz.; and Cananea, Mexico. There were other patents and publications set forth in defendant's answer, but no evidence was offered at the trial in connection therewith, except publications which appeared in the Engineering and Mining Journal of April 10, 1915, and October 24, 1924, respectively.
The court, after reviewing the facts of the case, held:
Carson v. American Smelting & Refining Co. (D. C.) 293 F. 771, 778, 779, 780.
The Anaconda Case.
In this, as in the A. S. & R. Case, the defendant pleaded want of...
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