Dixie Cup Co. v. Paper Container Mfg. Co., 9782.

• Decision Date: 10 June 1949
• Docket Number: No. 9782.,9782.
• Citation: 174 F.2d 834
• Parties: DIXIE CUP CO. v. PAPER CONTAINER MFG. CO.
• Court: U.S. Court of Appeals — Seventh Circuit

174 F.2d 834 (1949)

DIXIE CUP CO. v. PAPER CONTAINER MFG. CO.

No. 9782.

United States Court of Appeals Seventh Circuit.

June 10, 1949.

Casper W. Ooms, Chicago, Ill., Franklin M. Warden, James C. Leaton, Chicago, Ill., for appellant.

Carlton Hill, Chicago, Ill., Thomas L. Marshall, Chicago, Ill., for appellee.

Before MAJOR, Chief Judge, KERNER, Circuit Judge, and LINDLEY, District Judge.

LINDLEY, District Judge.

This is an appeal in a case which has been before this court twice previously in Dixie-Vortex Co. v. Paper Container Mfg. Co., 130 F.2d 569 and 169 F.2d 645. In the first appeal it was determined that defendant had infringed four claims of plaintiff's patent by the use of certain specified machines, and the cause was remanded for an accounting in accord with that conclusion. Subsequently, before the Master to whom the District Court referred the matter, plaintiff sought to include in its recovery damages for alleged infringement by two later machines manufactured by defendant, asserting that it had only recently discovered the newly alleged infringing devices. Thereupon defendant applied to the District Court for a declaratory judgment adjudging that its additional machines did not infringe and asked the court so to decide before continuing with the accounting. Plaintiff objected, but at the same time likewise endeavored to obtain a decision as to whether the new machines which plaintiff had complained infringed, before the Master proceeded, by a motion that defendant be declared in contempt of the existing judgment declaring it an infringer. Obviously, the court might, by either of these methods, have determined preliminarily to the accounting, whether the two machines which had been brought into the case after entry of the decree infringed. However, the court, presumably because of the multiplicity and volume of litigation arising in the District Court in a great metropolis and the consequent pressure upon the court, thought that the most practical procedure was to let the Master hear the entire matter on the accounting each party reserving, of course, its contentions as to infringement or non-infringement by these two machines, until final hearing on the merits.

The parties proceeded with a long, involved, complicated and expensive proceedings before the Master, who recommended a judgment, which was later entered and affirmed by this court, for treble damages for the infringement affirmed by this court on the first appeal. In addition, he concluded that the two machines subsequently brought into the case likewise infringed and recommended treble damages on account of this infringement. Upon review of the Master's report the District Court approved the conclusions and recommendations and entered judgment, as we have said, for infringement, not only by the machines originally before the court but also by the machines later brought into the case.

Upon the second appeal, this court affirmed the judgment for damages arising from the infringement by the machines involved in the first appeal. It reversed the judgment in so far as it included damages because of infringement by the machines subsequently brought into the litigation, holding under the facts and circumstances of the case, that plaintiff was estopped by its file-wrapper history to assert infringement by defendant by the use of the additional machines. Thereupon the cause was again remanded to the District Court with directions to proceed in accord with the decision of this court. We expressly refrained from determining whether either party was entitled to recover attorneys' fees or costs incurred in the litigation but declared that it was properly the function of the trial court, in the exercise of its sound discretion, to determine whether any attorneys' fees or costs should be awarded to either party.

Following issuance of the mandate, the parties appeared before the District Court and presented their conflicting claims as to fees and costs. Plaintiff seems not to have pressed too strongly its claim, which the court had previously allowed, but, as we read the record, then inclined to the view that neither party should recover and that it was strictly a matter lying within the District Court's discretion. It did, however, resist allowance of any award to defendant.

No testimony was heard, the parties agreeing that the court might accept the statement of counsel of each side as to the services rendered and the amount and the value thereof. At the conclusion, the court denied awards to either plaintiff or defendant for solicitors' fees or other costs of the accounting. The present appeal questions the propriety of that order. Plaintiff contends that it was clearly within the discretion of the trial court and defendant, that the court abused its discretion in failing to award it any allowance.

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