Central California Canneries Co. v. Dunkley Co.

• Decision Date: 19 June 1922
• Docket Number: 3824.
• Citation: 282 F. 406
• Parties: CENTRAL CALIFORNIA CANNERIES CO. v. DUNKLEY CO. et al. and seven other cases.
• Court: U.S. Court of Appeals — Ninth Circuit

282 F. 406

CENTRAL CALIFORNIA CANNERIES CO. v. DUNKLEY CO. et al. and seven other cases.

No. 3824.

United States Court of Appeals, Ninth Circuit.

June 19, 1922

Rehearing Denied August 7, 1922.

Kemper B. Campbell, Frederick S. Lyon, Francis J. Heney, and William J. Carr, all of Los Angeles, Cal., for appellants.

Fred L Chappell, of Kalamazoo, Mich., and W. A. Richardson, of San Francisco, Cal., for appellees.

Before MORROW and HUNT, Circuit Judges, and DIETRICH, District Judge.

MORROW Circuit Judge.

These suits, consolidated by stipulation of the parties, were commenced August 6, 1915, by the Dunkley Company. They are for injunctions restraining the defendants from infringing plaintiff's patent, No. 1,104,175, for a device for peeling peaches and other fruits. Plaintiff's assignor Samuel J. Dunkley, made application for the patent in suit on November 29, 1904. The application was for 'the improvement in machines for peeling peaches and other fruit,' patent on which was issued July 21, 1914. In the progress of this application through the Patent Office, eight claims were added for 'the process of peeling fruit and vegetables. ' The Examiner held that the applicant was not entitled in his machine application to prosecute claims for the process of peeling peaches, which process constituted a subject-matter of invention distinct and different from that involving claims for the machine. The applicant thereupon canceled these claims for the process in the machine application and incorporated them in an application dated June 25, 1914, for 'the process of peeling peaches and other fruits and vegetables. ' Upon this application patent No. 1,237,623 was issued to Dunkley August 21, 1917.

Interference was declared by the Commissioner of Patents September 3, 1907, with patent No. 864,944 issued to Beekhuis September 3, 1907. The file wrapper shows that priority of invention and use was under critical and extended examination by the officers of the Patent Office for five years. All the tribunals of the Patent Office found that Dunkley was the first to conceive and reduce to practice the mechanism of the apparatus, provided he was entitled to make the claims of the issue. The decision turned upon the effect of the words 'peeling jets of water,' which are found in each of the claims. The Commissioner awarded priority to Beekhuis. Dunkley appealed from that decision to the Court of Appeals for the District of Columbia. That court, in a decision rendered January 6, 1913, held that:

'Dunkley was the first to invent and put in practice a rapid and effective machine for peeling peaches. This comprised in the combination the jets of water which he evidently realized aided in the removal of the skins when disintegrated by the alkali solution. That he did not realize the full extent of their agency cannot deprive him of the benefits accruing from their use. His specifications and construction afforded sufficient foundation for the claims, and, as he was the first to conceive the idea and reduce it to successful practice he is entitled to the award of priority.'

The decision was certified to the Commissioner of Patents. Dunkley v. Beekhuis, 190 O.G. 267, 39 App.D.C. 494. Award of priority of invention and use was accordingly given to Dunkley by the Commissioner of Patents on June 16, 1914. A patent was thereupon issued to the plaintiff, the Dunkley Company, as the assignee of Samuel J. Dunkley.

In the present suits in the District Court of the Northern District of California, Southern Division, it was alleged that the defendants had made and were using infringing machines. Defendants' answers raised the issues of prior invention and use. Upon the trial it was contended by the defendants that the evidence was in some respects substantially different from that presented to the Court of Appeals of the District of Columbia, but Judge Van Fleet, before whom the cases were tried in the District Court (277 F. 1001), was unable to find that there was any such essential difference as to warrant the court in holding other than the conclusion reached by the District of Columbia court. The court accordingly held that plaintiff's patent was valid and that the defendants were infringers, and thereupon the court awarded an interlocutory decree in each case. These decrees were entered December 8, 1916, and are still pending. From these decrees in favor of plaintiff the defendants appealed to this court. The appeals were heard and the evidence reviewed. Central Cal. Canneries Co. v. Dunkley Co., 247 F. 790, 159 C.C.A. 648. The decrees of the District Court were affirmed. A petition for rehearing was denied. A petition to the Supreme Court of the United States for certiorari was denied December 17, 1917. 245 U.S. 668, 38 Sup.Ct. 134, 62 L.Ed. 539.

On May 1, 1918, defendants filed a motion in this court for certain orders to the District Court, and among others an order to vacate the above-mentioned decrees; also an order to reopen the cases for further testimony and proof on behalf of the defendants. The motion was denied May 20, 1918. The order provided that the mandates of this court 'are hereby directed to issue without prejudice to the right of the plaintiff appellee herein to apply to the District Court for leave to make the Dunkley Company or such other corporation or persons as plaintiff appellee may contend is or are proper or necessary parties plaintiff to the action. ' The mandates in accordance with the order of this court were issued May 20, 1918.

Thereafter, on October 14, 1918, the defendants moved the District Court to request this court to withdraw its mandates of affirmance and authorize the District Court to set aside its decrees and all other proceedings had therein, and to reopen the trial and hearing of each of said causes, and permit the defendants to reform and amend their pleadings, for the purpose of receiving certain alleged newly discovered evidence bearing on the validity of the plaintiff's patent and its infringement by the several defendants, and upon such hearing to enter new and different decrees if the evidence warranted such action. The grounds of this motion were in substance that subsequent to the entry of the decrees herein, in a suit on the same patent by the plaintiff and its assignee against another alleged infringer (Dunkley Co. v. Pasadena Canning Co., 261 F. 203), tried before Judge Trippet in the District Court for the Southern District of California, certain further and additional evidence was produced and heard, which it was alleged could not with reasonable diligence have been earlier discovered, and was for that reason not available upon the trial of these causes; that the District Court for the Southern District of California heard the cases before it and held the patent void and dismissed the bill. This last decision, it is contended by the defendants, resulted in a conflict of decision as to the validity of the patent, and it was said it would work confusion and result in hardship to the defendants. It was claimed that the newly discovered evidence was of a character which would render it probable that on another hearing the patent would be held void by the District Court. There was a further and distinct ground that at the date of the hearing in the District Court the plaintiff had parted with all its interest in the subject matter of the suit by assigning its title in the patent pending the hearing to another corporation, and for that reason it was claimed the decrees were void and should be set aside.

The case before Judge Trippet in the Southern District of California was appealed to this court, and that decree affirmed, not upon the finding that the Dunkley patent was invalid, but upon the ground that, in view of the prior art, the Dunkley invention was limited to the particular means employed, and, as so limited, defendants' device did not infringe. Dunkley Co. v. Pasadena Canning Co., 261 F. 386. A petition to the Supreme Court of the United States for certiorari in this case was denied April 20, 1920. 253 U.S. 485, 40 Sup.Ct. 481, 64 L.Ed. 1025.

The case of Dunkley Co. v. California Packing Corporation, before Judge Augustus N. Hand in the District Court for the Southern District of New York, 277 F. 989, affirmed by the Circuit Court of Appeals in the Second Circuit, 277 F. 996, was also called to the attention of Judge Van Fleet upon the motion of the defendants to request this court to withdraw its mandates of affirmance and reopen the cases in the District Court. The controlling question in the New York Case involved a license given by the Dunkley Company to the California Fruit Canners' Association, 'for the benefit of itself and its successors,' in settlement of an expensive conflict between Dunkley and the Fruit Canners' Association. The Fruit Canners' Association was the assignee of Beekhuis. This license was 'free of royalties of any kind whatsoever, for the use of the said invention in connection with its business relative to the canning or treatment of fruit, granting unto the said California Fruit Canners' Association the free right for the use of any machine or machines or invention owned or controlled by the said Dunkley Company' and covered by the patents. With respect to the question expected to grow out of the Dunkley application at issue in that case the court said:

'But the issues in this litigation differ from those in any of the preceding causes. Here, as there, anticipation and lack of invention were advanced by the defense, but in addition there is a plea of license growing out of the following uncontradicted facts.'

The court thereupon states the facts of the license and its transfer and assignment by the Fruit Canners' Association to the California...