Dunkley Co. v. Central California Canneries Co.

• Decision Date: 22 August 1921
• Docket Number: 201.
• Citation: 277 F. 1001
• Parties: DUNKLEY CO. v. CENTRAL CALIFORNIA CANNERIES CO. et al.
• Court: U.S. District Court — Northern District of California

277 F. 1001

DUNKLEY CO. v. CENTRAL CALIFORNIA CANNERIES CO. et al.

No. 201.

United States District Court, N.D. California.

August 22, 1921

See also, 247 F. 790, 159 C.C.A. 648; 261 F. 203.

Chappell & Earl, of Kalamazoo, Mich., and W. A. Richardson, of San Francisco, Cal., for plaintiff.

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

VAN FLEET, District Judge.

The above-entitled cause and the seven similar causes by the same plaintiff, numbered in the margin, ^[1] all involving the validity of the same letters patent, were heretofore tried together in this court in April, 1916, and on December 4 1916, in accordance with an oral OPINION, an interlocutory decree was entered in each holding the patent valid and infringed and ordering an accounting. These decrees were thereafter in due course in all respects affirmed by the Circuit Court of Appeals (Central California Canneries Co. v. Dunkley, 247 F. 790, 159 C.C.A. 648), and its mandate of affirmance filed in this court on May 22, 1918. Thereafter on October 14, 1918, after the coming down of the remittitur, the present motion was interposed by the defendants asking that this court request of the Circuit Court of Appeals the withdrawal of its mandate of affirmance therein and that the causes be thereupon remitted to this court with authority to set aside its decrees and all other proceedings therein, to reopen the same and permit the defendants to reform and amend their pleadings, and thereupon to rehear said causes for the purpose of receiving certain alleged to be newly discovered, additional, and further evidence bearing on the validity of the patent involved and its infringement by the several defendants, and upon such hearing to enter new and different decrees should the evidence warrant.

The grounds of the motion are, in substance, that subsequent to the entry here of said decrees in a suit on the same patent by this plaintiff and its assignee against another alleged infringer (Dunkley Co. et al. v. Pasadena Canning Co., 261 F. 203), tried before Judge Trippet in the District Court for the Southern District of this state wherein certain further and additional evidence was produced and heard which it is alleged could not with reasonable diligence be earlier discovered and was for that reason not available on the trial of these causes, the latter court rendered its decree on September 4, 1918, holding the patent void and dismissing the bill, which decree has thus resulted in a conflict of decision as to the validity of the patent and it is said will work confusion and result in hardship to the defendants; and it is claimed that the newly discovered evidence is of a character which would render it probable that on another hearing the patent would be held void by this court. There is a further and distinct ground that at the date of the hearing in this court the plaintiff herein 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 is claimed the decrees are void and should be set aside.

The motion was based upon affidavits as to diligence in discovering and the character of the newly discovered evidence largely as disclosed in the record in the cause heard in the Southern district and other evidence and documents to be produced at the hearing of the motion; and falling within the latter category, there was produced and relied on at the presentation the record of the evidence proceedings, and decree in another and later suit brought by the assignee of the plaintiff, and decided by Judge Hand (A.N.) in the Southern district of New York, subsequent to the filing of this motion but before it was heard, in which the same patent was involved and wherein the decree, based substantively upon the same evidence as that produced before Judge Trippet, was again in favor of the defendant (Dunkley Co. v. Cal. Packing Corporation, 277 F 989).

While, as noted, the motion was entered here in October, 1918, its hearing was at the suggestion of the court postponed until the determination of the appeal then pending in the Circuit Court of Appeals, in the suit heard before Judge Trippet, in anticipation that the decision in the latter might facilitate a solution of the question involved in the motion-- and which, as we shall see, has contributed to that effect. That decision having been rendered (Dunkley Co. v. Pasadena Canning Co. (C.C.A.) 261 F. 386), the motion has after some considerable delay been argued and submitted. Since the submission, an appeal in the suit in the New York case has been heard and decided. Dunkley v. California Packing Corporation (C.C.A.) 277 F. 996.

Motions of similar import are not without precedent in patent cases, but they are unusual, and the practice not uniform, and this fact doubtless led to some confusion in the minds of defendants' counsel as to where the jurisdiction rested. It appears that defendants first presented a motion to accomplish the same purpose and upon the same showing, to the Circuit Court of Appeals in these cases after its denial of a rehearing but before the remittitur had been sent down; but that court peremptorily denied the defendants' motion, without opinion, and by an order which is wholly silent as to defendants having leave to apply to this court for such relief. This action is now made the basis of an objection by plaintiff that the defendants are precluded from renewing the present motion here and that this court is concluded by the ruling of the Circuit Court of Appeals from granting the relief asked.

I was disposed at the argument to regard the objection rather lightly, but a more mature consideration of the authorities discloses that the question is not free from difficulty. That defendants in applying to this court are now pursuing the more usual and proper course in such instances is, I think, fairly to be gathered from the cases on the subject; and had that course been taken in the first instance, the present objection could not have arisen. Barber v. Otis Motor Sales Co. (D.C.) 245 F. 945; Sundh Electric Co. v. Cutler-Hammer Mfg. Co., 244 F. 163, 156 C.C.A. 591; Wilson v. Union Tool Co. (C.C.A.) 265 F. 669. But this fact does not aid us. The defendants saw fit to first make the application to the Circuit Court of Appeals while the controversy was yet in its hands, and it ruled upon it. That that court had jurisdiction in a proper case to grant the relief no question is or could well be made. In re Potts, 166 U.S. 263, 17 Sup.Ct. 520, 41 L.Ed. 994; Dunn Wire-Cut Lug Brick Co. v. Toronto Fire Clay Co., 259 F. 258, 170 C.C.A. 326. In the latter case the Circuit Court of Appeals of the Sixth Circuit, after rendering its decree, granted a similar application authorizing the lower court to reopen the cause without requiring a request from the latter. In the present case the Court of Appeals took cognizance of the motion and ruled on it, and apparently upon its merits-- at least, there is nothing to indicate a more limited view-- but it denied the relief, not merely without prejudice to an application here, but unconditionally and finally, and we must therefore assume that it so ruled because the application did not appeal to it as having merit. Of course, it is hardly necessary to suggest that where a question in a cause has been ruled by the higher court it becomes as to the court below the law of the case and the latter may not competently proceed in contravention of it. As stated in Re Potts, supra, where the lower court had taken a course not in pursuance of the mandate of the higher court:

'When the merits of a case have been once decided by this court on appeal, the Circuit Court has no authority, without express leave of this court, to grant a new trial, a rehearing or a review, or to permit new defenses on the merits to be introduced by amendment of the answer. (Citing cases.) In this respect, a motion for a new trial or a petition for a rehearing stands upon the same ground as a bill of review, as to which Mr. Justice Nelson, speaking for this court, in Southard v. Russell, above cited, said: 'Nor will a bill of review lie in the case of newly discovered evidence after the publication, or decree below, where a decision has taken place on an appeal, unless the right is reserved in the decree of the appellate court, or permission be given on an application to that court directly for the purpose. This appears to be the practice of the Court of Chancery and House of Lords, in England; and we think it founded in principles essential to the proper administration of the law, and to a reasonable termination of litigation between the parties in chancery suits."

But defendants contend that they are not asking here the same relief they asked of the Court of Appeals; that what they are asking this court to do in no way runs counter to the ruling of the higher court; that what they asked there was for a direct order from that court reopening the decrees, whereas all they ask this court to do is to 'request the privilege' of taking that action. The answer of the plaintiff is that this is merely seeking the same relief by going the other way about-- 'whipping the devil around the stump,' as it were-- and I am inclined to take that view.

But however the objection should be decided, is, in the view I take of the merits, of little moment in the present case. I say this for the reason that, after a very careful review of the voluminous record, I find myself able to take no more favorable view of this application than that indicated by the Court of Appeals; and there can be no transgression or disparagement of the ruling of the latter c...