Dunkley Co. v. Central California Canneries

• Decision Date: 19 October 1925
• Docket Number: No. 4478.,4478.
• Citation: 7 F.2d 972
• Parties: DUNKLEY CO. v. CENTRAL CALIFORNIA CANNERIES et al.
• Court: U.S. Court of Appeals — Ninth Circuit

7 F.2d 972 (1925)

DUNKLEY CO. v. CENTRAL CALIFORNIA CANNERIES et al.

No. 4478.

Circuit Court of Appeals, Ninth Circuit.

September 14, 1925.

Rehearing Denied October 19, 1925.

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

Pillsbury, Madison & Sutro, of San Francisco, Cal., and Frederick S. Lyon, of Los Angeles, Cal., for appellees Central California Canneries Company, Griffin & Skelley Company, and Sunlit Fruit Company.

Kemper Campbell, of Los Angeles, Cal., for appellees Ainsley Packing Company, Anderson-Barngrover Manufacturing Company, Golden Gate Packing Company, J. F. Pyle & Son, Inc., and Hunt Bros. Company.

Before HUNT, MORROW, and McCAMANT, Circuit Judges.

McCAMANT, Circuit Judge.

The points at issue between the parties have chiefly to do with the scope of plaintiff's patent, the effect of the litigation in which its validity was adjudged, and the extent of the master's authority in passing on the questions in dispute.

In plaintiff's machine the peaches are subjected to a bath in a hot solution of lye for the purpose of disintegrating the skin. They are then delivered to a conveyor, on which they pass between rotary brushes, which turn the peaches so that each peach is subjected to forcible jets of water, which wash off the disintegrated skin. Plaintiff's patent has been before the courts a number of times. There was an interference proceeding in the Patent Office, which found its way to the Court of Appeals for the District of Columbia, where the decision awarded priority to plaintiff's assignor. Dunkley v. Beekhuis, 39 App. D. C. 494, 499. The patent came before this court on appeal from the interlocutory decree in the case at bar. Judge Van Fleet was affirmed. Central California Canneries v. Dunkley Co., 247 F. 790, 159 C. C. A. 648.

Plaintiff also brought suit against Pasedena Canning Company et al. in the District Court for the Southern District of California, Southern Division. This case was determined by Judge Trippet in an opinion reported in 261 F. 203. He held plaintiff's patent void because of anticipation, and he also held that defendants' machine, known as the Pasadena washer, was not an infringement. An appeal was taken from Judge Trippet's decree, and the appeal was determined by an opinion written by Judge Rudkin. 261 F. 386. This court did not find it necessary to pass on so much of the decision of the lower court as held the Dunkley patent void for anticipation. In the light of the evidence presented by that record, it was held that "the Dunkley patents must be limited to the particular means employed, and those means must be limited to directing peeling jets of water upon the fruit as described in the patent." With the Dunkley patent so limited, it was held that the Pasadena washer did not infringe.

In the meantime plaintiff had brought suit against California Packing Corporation in the District Court for the Southern District of New York. This case was disposed of by an opinion of Judge Augustus N. Hand. 277 F. 989. He held that the defendant was within the protection of a license given by plaintiff to defendant's assignor; also that plaintiff's patent was void for anticipation. The decree was affirmed by the Circuit Court of Appeals for the Second Circuit on the former ground, the court finding it unnecessary to pass on the validity of plaintiff's patent. 277 F. 996.

After Judge Trippet's decision was rendered, defendants moved in the District Court in the case at bar asking that court to request this court to withdraw its mandate of affirmance and to remit the litigation to the District Court for the purpose of receiving additional testimony. Judge Van Fleet handed down an opinion denying this motion. 277 F. 1001. An appeal from this ruling was prosecuted to this court, and the appeal was dismissed. In connection with this appeal defendants filed in this court motions for leave to file in the District Court bills in the nature of bills of review. In passing on these motions Judge Morrow, speaking for this court, reviewed the entire litigation, emphasizing the fact that by a prior decision of this court "the Dunkley invention was limited to the particular means employed." The motions for leave to file bills in the nature of bills of review were denied, but the defendants were "authorized to file in the lower court an appropriate petition for a rehearing," and the District Court was "authorized to entertain and make disposition of the same, according to equity, upon considerations addressed to the materiality of the new matter and diligence in its presentation, without restraint by reason of any proceedings heretofore had or orders made in this court." 282 F. 406. In accordance with the authority so given, a motion to reopen the case was filed by the defendants in the District Court, and denied at a date subsequent to the final decision of the case in the District Court, though prior to the entry of the decree from which plaintiff appeals.

On the original trial of the case at bar the defendants stipulated that they had either used or made a type of apparatus shown by drawings designated as Exhibits A and B. The question actually litigated was not whether these machines were infringements, but whether plaintiff's patent was void because of anticipation. We think the following conclusions were binding on the master and the parties as the law of the case. (1) That plaintiff's patent is valid. (2) That defendants, in making and using the machines referred to in the stipulation, infringed plaintiff's patent. (3) That plaintiff's patent is limited to the particular means employed, to wit, the removal of the disintegrated skins of the peaches by forcible sprays or jets of water.

The opinion of this court, speaking through Judge Morrow, carrying with it the above limitation of plaintiff's patent, is a part of the law of the case. Thompson v. Maxwell Co., 168 U. S. 451, 456, 18 S. Ct. 121, 42 L. Ed. 539; Mutual Life Co. v. Hill, 118 F. 708, 55 C. C. A. 536; Olsen v. North Pacific Co., 119 F. 77, 79, 55 C. C. A. 665; Empire State Co. v. Hanley, 136 F. 99, 100, 69 C. C. A. 87; Montana Mining Co. v. St. Louis Co., 147 F. 897, 78 C. C. A. 33; D'Arcy v. Jackson Cushion Co., 212 F. 889, 129 C. C. A. 409.

The findings of the master in passing on disputed questions of fact are entitled to great respect. Where, as in this case, they are approved by the District Court, there is a strong presumption that they are correct. Davis v. Schwartz, 155 U. S. 631, 636, 15 S. Ct. 237, 39 L. Ed. 289; Last Chance Co. v. Bunker Hill Co., 131 F. 579, 587, 66 C. C. A. 299; Fullerton Association v. Anderson Co., 166 F. 443, 453, 92 C. C. A. 295; Bemis Car Co. v. J. G. Brill Co., 200 F. 749, 764, 119 C. C. A. 229; Continuous Glass Co. v. Schmertz Glass Co., 219 F. 199, 205, 135 C. C. A. 85; U. S. Frumentum Co. v. Lauhoff, 216 F. 610, 613, 132 C. C. A. 614; Malleable Iron Range Co. v. Lee (C. C. A.) 263 F. 896; Westinghouse Co. v. Wagner Manufacturing Co. (C. C. A.) 281 F. 453. This rule is specially applicable to the case at bar. The record is replete with evidence of the intelligent, conscientious, and painstaking attention given by the master to the determination of the questions referred to him.

In determining the profits with which a defendant in a patent suit is chargeable, the burden of proof rests upon plaintiff. 20 R. C. L. 1177, 1178; Metallic Rubber Co. v. Hartford Co. (C. C. A.) 275 F. 315, 320, 321; Fox Co. v. Underwood Co. (C. C. A.) 287 F. 447, 449. The same rule applies in the assessment of plaintiff's damages. Dowagiac Co. v. Minnesota Co., 235 U. S. 641, 35 S. Ct. 221, 59 L. Ed. 398.

The profits recoverable are actual, not possible, profits. Coupe v. Royer, 155 U. S. 565, 583, 15 S. Ct. 199, 39 L. Ed. 263. The profits for which an infringer must account are the fruits of the advantage which he derived from the use of the invention, as compared with other means then open to the public and adequate to enable him to obtain an equally beneficial result. Mowry v. Whitney, 14 Wall. 620, 651, 20 L. Ed. 860; Black v. Thorne, 12 Blatchf. 20, 3 Fed. Cas. 525; same case on appeal, 111 U. S. 122, 124, 4 S. Ct. 326, 28 L. Ed. 372; Tilghman v. Proctor, 125 U. S. 136, 146, 8 S. Ct. 894, 31 L. Ed. 664; Coupe v. Royer, 155 U. S. 565, 583, 15 S. Ct. 199, 39 L. Ed. 263; Knox v. Great Western Mining Co., 6 Sawy. 430, 14 Fed. Cas. 809-811; Locomotive Safety Co. v. Pennsylvania Co. (C. C.) 2 F. 677, 681; Columbia Wire Co. v. Kokomo Co., 194 F. 108, 109, 114 C. C. A. 186; Cambria Iron Co. v. Carnegie Steel Co., 224 F. 949, 140 C. C. A. 437; 20 R. C. L. 1177.

It was competent for the parties to offer proof as to the means available to the defendants for the peeling of peaches at the time when the infringements took place, and it was the duty of the master to determine the profit or advantage to the defendants in the use of the plaintiff's invention as compared with other means available. Plaintiff contends that no machinery was so available to defendants and that the comparison should be made with hand peeling. The evidence of plaintiff has been compiled and presented on this theory.

The defendants, by an overwhelming array of testimony, showed that long prior to plaintiff's invention the lye peeling of peaches was well known to the canners of California. On the 21st of October, 1890, a patent was issued to D. D. Jones for a fruit-dipping apparatus. Jones' invention provided a means for dipping fruit in a solution of lye. It is true, as contended by plaintiff, that the patent did not cover any means for treating the fruit after the application of the lye. It is also true that the process was designed particularly for prunes. But the evidence shows that thousands of these Jones dippers were in use in California at the time when plaintiff's patent was issued, July 21, 1914. A number of peach canners were using the device for removing the skins from...