Eastman Kodak Co v. Gray

• Decision Date: 21 May 1934
• Docket Number: No. 709,709
• Citation: 54 S.Ct. 722,78 L.Ed. 1291,292 U.S. 332
• Parties: EASTMAN KODAK CO. et al. v. GRAY
• Court: U.S. Supreme Court

292 U.S. 332

54 S.Ct. 722

78 L.Ed. 1291

EASTMAN KODAK CO. et al.

v GRAY.

No. 709.

Argued May 1, 1934.

Decided May 21, 1934.

Messrs. Dean S. Edmonds, William H. Davis, and George E. Middleton, all of New York City, for petitioners.

Mr. Thomas Raeburn White, of Philadelphia, Pa., for respondent.

Mr. Justice McREYNOLDS delivered the opinion of the Court.

In an action at law, respondent, Gray, alleged that the petitioners had infringed his patent for a power transmitting mechanism and asked damages. The patent contains six claims; he relied upon all except the fourth. A plea of the general issue and notice of special matters raised questions of novelty, invention, and infringement.

The cause was first tried to a jury, Judge Dickinson presiding. Certain facts were stipulated; witnesses were examined by both parties; there were many exhibits. The jury found for respondent; the judge granted a new trial because he deemed the charge inadequate.

Thereupon, the parties stipulated in writing 'that trial by jury is hereby waived and that the case shall be submitted to the Court for decision upon the record already made, as if the testimony and exhibits offered in evidence at the trial before Judge Dickinson and a jury had been duly offered in evidence before the Judge who may be assigned to hear this case, subject to any objections which appear on the record, and that all motions made by either party at the said trial shall be deemed to have been made before the Judge trying the case, both parties to have the right of appeal as in other cases.'

Afterwards, at a session held before Judge Kirkpatrick, the issues between the parties 'came to be tried by the Court without a jury upon the record of the same case which had been previously tried before a jury and the Court the tenth to fourteenth days inclusive of December, 1931, the issue between the said parties having been tried by the Court without a jury on said seventeenth day of March, 1932, in accordance with a stipulation entered into by and between the attorneys for the respective parties, at which date, namely March 17, 1932, came as well the said plaintiff as the said defendants by their res ective attorneys; and upon the trial the counsel for the respective parties offered their evidence as particularly set forth in the following stenographic notes of testimony and the stenographer's minutes attached hereto; and the evidence in the cause being closed the learned Trial Judge rendered his opinion and decision, in writing, as hereinafter set forth. * * *' Judgment went for the petitioners here July 16, 1932. A supporting opinion dealt generally with the issues. Near the end of it he said: 'The statements of fact contained in this opinion may be taken as findings of fact. If separate findings of fact are desired the parties may submit requests in accordance herewith.' And he thus summarized his conclusions:

'1. The combination of closed coil inner thrust member and open coil outer sheath member is not patentable because its elements were known to the prior art and no new mode of operation or functional relationship arises from putting them together.

'2. Claims 1 and 2 cannot be interpreted as calling for a closed coil inner thrust member in view of the file wrapper history of this patent.

'3. Claims 1 and 2 are anticipated.

'4. Claim 3 is not infringed.

'5. Claims 5 and 6 are invalid because United States patent No. 1,297,327 to Dakin and Underwood antedating the plaintiff's application discloses the method of attaching the thrust member to the stem claimed, and conclusion '1' applies to these claims.'

Finally, he directed, 'judgment may be entered for the defendant.'

Counsel for Gray tendered a bill of exceptions 'to the rulings, opinion and action of the said Court, and re- quested the seal of the Judge aforesaid should be put to the same, according to the form of the statute in such case made and provided.' This was duly signed and sealed July 28, 1932. The bill contains the evidence presented and the minutes of the proceedings. It shows no exception to any ruling upon a motion presented by respondent during the progress of the cause. The transcript shows the following docket entry opposite the date January 9, 1932: 'Plaintiff's motion for judgment on the verdict and assessment of treble damages filed' without more. This is not enough to support the suggestion that a motion for judgment upon the whole record was duly presented and overruled accompanied by adequate exceptions.

August 15, 1932, respondent prayed and obtained allowance of an appeal to the Circuit Court of Appeals. The assignment of errors there stated in five separate paragraphs that the trial judge erred in finding as set out in conclusions 1, 2, 3, and 5, supra, and in granting the judgment.

Counsel for petitioner correctly affirmed: 'Examination of this bill of exceptions discloses that no request or motion was made, denied, and excepted to, or any like action taken during the progress of the trial, which presented to the trial court the question whether there was support in the evidence for the findings challenged by the assignment of errors or whether the undisputed evidence...