Claiborne-Reno Co. v. EI Du Pont de Nemours & Co.

• Decision Date: 06 May 1935
• Docket Number: No. 10105.,10105.
• Citation: 77 F.2d 565
• Parties: CLAIBORNE-RENO CO. v. E. I. DU PONT DE NEMOURS & CO.
• Court: U.S. Court of Appeals — Eighth Circuit

77 F.2d 565 (1935)

CLAIBORNE-RENO CO. v. E. I. DU PONT DE NEMOURS & CO.

No. 10105.

Circuit Court of Appeals, Eighth Circuit.

May 6, 1935.

John L. Gillespie and Mark C. Reno, both of Des Moines, Iowa (Samuel Williston, of Cambridge, Mass., and Fey H. Moody, Walter C. Marquis, and James M. Stewart, all of Des Moines, Iowa, on the brief), for appellant.

Willis J. O'Brien, of Des Moines, Iowa (Hughes, O'Brien & Faville, of Des Moines, Iowa, and C. M. Spargo, of Wilmington, Del., on the brief), for appellee.

Before WOODROUGH and FARIS, Circuit Judges, and DONOHOE, District Judge.

FARIS, Circuit Judge.

This is the second appearance of this case in this court. Formerly appellee sued appellant on an account for goods sold and delivered. The correctness of the account was admitted, but appellant filed a counterclaim for damages for the alleged breach of a contract, and had judgment against appellee. Upon the first appeal, the judgment in favor of appellant here was reversed "for further proceedings not inconsistent with this the opinion." E. I. Du Pont de Nemours & Co. v. Claiborne-Reno Co., 64 F.(2d) 224, 233, 89 A. L. R. 238.

Thereafter in the trial court appellant amended its counterclaim by filing a second amended and substituted counterclaim, which it again, later and by permission of the court, amended. At the close of the evidence on the part of appellant, the trial court sustained the motion of appellee for a directed verdict, on the ground, among others urged, that the opinion of this court and the judgment thereof on the first appeal are the law of the case. Judgment was entered in favor of appellee for the full amount of its account.

No reason exists why we should lengthen these views by a restatement of the facts. These are fully and carefully set out in the opinion of this court rendered on the first appeal, wherein as reported 64 F.(2d) 224, 89 A. L. R. 238 they may be read by the curious.

Appellant relies for reversal on five alleged errors. However, these but state the identical legal proposition in five different ways. Condensed into one question, that question is, Do the pleadings and evidence in the instant case so far differ as to avoid the controlling effect of the opinion and judgment of this court on the former appeal? In short, did the rule called "the law of the case" warrant the trial judge, who deemed it did, in directing a verdict?

It is proper, in approaching the solution of the question propounded, to determine in limine what is meant by the law of the case. Excellent definitions are at command in many cases in this circuit. Pennsylvania Mining Co. v. United Mine Workers (C. C. A.) 28 F.(2d) 851; Northern Pacific Ry. Co. v. Van Dusen Harrington Co. (C. C. A.) 60 F.(2d) 394; Ætna Life Insurance Co. v. Wharton (C. C. A.) 63 F.(2d) 378; Zurich General Accident & Liability Ins. Co. v. O'Keefe (C. C. A.) 64 F.(2d) 768; American Surety Co. v. Bankers', etc., Association (C. C. A.) 67 F.(2d) 803, loc. cit. 805. In the latter case, which is one of the very late cases defining the "law of the case," this court in an able opinion by Van Valkenburgh, Circuit Judge, said: "The phrase `law of the case' has been employed and applied in many decisions of this and other federal courts. Stated generally, the rule is that, `where evidence is substantially the same on both trials, questions of law determined on writ of error or appeal are `law of the case,' both for trial and appellate court, on second writ of error or appeal.' Pennsylvania Mining Co. v. United Mine Workers of America et al. (C. C. A. 8) 28 F.(2d) 851; Thompson v. Maxwell Land-Grant & Railway Co., 168 U. S. 451, 18 S. Ct. 121, 42 L. Ed. 539. This rule has been announced and received adherence in many decisions of this court. Finley v. United Mine Workers, 300 F. 972; Federal Reserve Bank v. Omaha National Bank, 45 F.(2d) 511; Page v. Arkansas Natural Gas Corporation, 53 F.(2d) 27; City and County of Denver v. Denver Tramway Corporation, 23 F.(2d) 287; Ætna Life Ins. Co. v. Wharton, 63 F.(2d) 378; H. P. Coffee Co. v. Reid, Murdoch & Co., 60 F.(2d) 387."

There are two points of alleged difference urged by appellant as appearing in the pleading and evidence in the present appeal, which it is urged did not appear when the case was here on the first appeal. These are that: (a) Both the amended counterclaim and the evidence on the trial disclosed that the article dealt with in the contract, namely, Duco, is covered by United States letters patent, and therefore the contract was good as a license and ran for the life of the patent; and (b) that on such last trial both the amended counterclaim and the evidence showed a consideration for the contract, namely, a purchase by appellant, contemporaneously with the alleged verbal contract, of some $1,800 worth of Duco from appellee.

The contention that the contract constituted a license agreement to sell a patented article, and therefore it ran for the full remaining term, if any, of the patent, was not anywhere mentioned on the first trial. Nothing now here urged concerning it is therefore affected by the law of the case. But the contention must fail on account of a lack of proof, and by reason of the fact that nothing is plainer than that the contract in the case is not a license agreement under a patent, nor is it any conveyance of any interest whatever in a patent. The word "patent" nowhere occurs in the written contract. It occurs in the evidence only in a casual statement by one of appellant's witnesses in which he quotes the agent of appellee, as saying "it is patented, it is a patented article," and again when the label on a can was offered as evidence of a patent, and an objection to the offer sustained by the court. This action of the court is nowhere complained of as error, so the can is not before us, and, if it were, it would not be admissible as evidence of a patent. It is too plain for argument that the mere statement of the agent of appellee in a casual conversation that the article sold is patented is not sufficient to prove that the definitive contract afterwards made, and which makes no mention of a patent, is in fact a license agreement or the conveyance of an interest in some unnamed and unnumbered letters patent. The suit was an action at law. No effort was made and no contention anywhere urged that the written contract did not express the final meeting of the minds of the parties to it. No attempt was made to reform it, so it necessarily speaks the agreement entered into. We know of no reason why antecedent and extrinsic facts, save such as bore on the damages, should have come into the case to confuse it. As this court held on the first appeal, the written contract is a sales agency contract, and nothing more. 64 F.(2d) 224, loc. cit. 229, 89 A. L. R. 238. It does not bear a single earmark of a license agreement under a patent or of a conveyance of any interest whatever, in a...