Flat Slab Patents Co. v. Turner

• Decision Date: 18 November 1922
• Docket Number: 5143.,5142
• Citation: 285 F. 257
• Parties: FLAT SLAB PATENTS CO. v. TURNER. [1] TURNER v. FLAT SLAB PATENTS CO.
• Court: U.S. Court of Appeals — Eighth Circuit

285 F. 257

FLAT SLAB PATENTS CO. v. TURNER. ^[1]

TURNER v. FLAT SLAB PATENTS CO.

Nos. 5142, 5143.

United States Court of Appeals, Eighth Circuit.

November 18, 1922

[Copyrighted Material Omitted] [Copyrighted Material Omitted] [Copyrighted Material Omitted]

A. C. Paul, of Minneapolis, Minn. (Edward Rector, of Chicago, Ill., on the brief), for substituted plaintiff.

Frank A. Whiteley, of Minneapolis, Minn., and Willard Eddy, of Omaha, Neb., for defendant.

Before HOOK and STONE, Circuit Judges, and WADE, District Judge.

STONE Circuit Judge.

These cases involve an accounting for infringements of patent No. 698,542, to Norcross, April 29, 1902, for a flat slab reinforced concrete flooring. In Drum v. Turner, 219 F. 188, 135 C.C.A. 74, the defendant Turner was held to have infringed claims 1, 3, and 4, and an injunction and an accounting were ordered. Drum who then owned the patent assigned to the Flat Slab Patents Company and the latter was substituted as plaintiff. After the injunction defendant employed a new arrangement of the reinforcing metal called the 'Nevins' construction. Upon plaintiff's petition for his attachment for contempt the trial court held that the Nevins construction also infringed. It imposed a fine, but to enable defendant to speed a review by this court it made the fine payable to the United States as for a criminal contempt reviewable by writ of error, instead of by appeal, as from a civil or remedial order at the conclusion of the final accounting. Defendant took a writ of error, but on plaintiff's motion this court dismissed it. Turner v. United States, 238 F. 194, 151 C.C.A. 270. We held the contempt proceeding was essentially civil or remedial for the protection of plaintiff's property interests and its character should not have been changed for defendant's convenience. Defendant then adopted still another construction called the 'New Spiral,' practically the same as the 'Nevins,' with the exception of a feature that impressed Judge Morris in the contempt proceeding, and plaintiff claims that it also infringed.

The master to whom the trial court referred the cause for an accounting divided the time of his inquiry into three periods: First, prior to August 23, 1911; second, August 23, 1911, to August 1, 1915; and, third, after August 1, 1915. In the first period questions of pleading, marking and notice to defendant are involved. In the second are the main questions of accounting. The third involves defendant's responsibility on account of his new constructions which the master held to infringe. The master found plaintiff should recover $188,483.76 as profits in periods 1 and 2 and royalty in period 3. He made an alternative finding of $121,151.08 as damages, wholly on a royalty basis for the entire time. Upon exceptions and further specific findings by the master the trial court reduced the entire recovery to $6,983.81 for defendant's profits in the second period and entered a final decree for that amount. The plaintiff appealed from the first decree. The defendant also appealed from that decree and from the interlocutory order in the contempt proceeding involving infringement by his 'Nevins' construction.

A disposition of the first and third branches or periods of the case will tend to narrow and clarify the questions involved in the second period.

First Period.

It is not clear that it was intended in the original bill to claim damages prior to the assignment from Norcross to Drum, July 19, 1911. In one view the bill is broad enough and yet there are specific averments tending to induce a belief to the contrary. This latter conclusion is supported by the averments of the bill on the subject of notice under section 4900, Rev. Stat. (section 9446, Comp. Stat. 1916). This section requires as a prerequisite to recovery of damages either a marking of the patented article or tagging of the package if so contained, or failing these, then notice to the defendant of his infringement. The bill does not aver that the patented article was marked or tagged. It is obvious that such marking or tagging is here practically impossible so far as notice to the public, which is the object of the statute, is concerned, and we can judicially notice that fact without averment. The claim and specifications of the patent relate to a particular placement and arrangement of strips of metallic network which are permanently concealed from view the moment the cement is poured. We may assume, therefore, from the absence of averments and the nature of the invention, that there was no marking and that plaintiff had to rely upon individual notice to defendant. Indeed, the bill proceeds upon this theory. The original bill of complaint contains in paragraph VII the following:

'And your orator further shows unto your honors that the said defendant, Claude A. P. Turner, well knowing the premises and your orator's rights in the aforesaid letters patent, but contriving to injure your orator and deprive him of the exclusive use and enjoyment of the benefits, advantages and profits which might and otherwise would accrue to him from the said letters patent, did, as your orator is informed and believes, and so avers, after the grant of said letters patent and after the ownership thereof was vested in your orator, and within the term of seventeen years after the grant of said letters patent, and before the beginning of this suit, at Minneapolis, Minnesota, and elsewhere in the United States, and without the license or consent of your orator, and against the will of your orator, and in violation of his rights, and in infringement of said letters patent, unlawfully and wrongfully, and in defiance of the rights of your orator, make, or cause to be made, and use, or cause to be used, and sell,' etc.

This is the formal customary form of averment and is not one of individual notice of infringement required by R.S. Sec. 4900. Paragraph VIII of the bill is as follows:

'And your orator further avers, on information and belief, that said defendant has had actual notice of the said infringement from and after the date when he so began the infringement, and your orator further avers that he has given due notice to the defendant and to public that the reinforced concrete floors being manufactured by the defendant are infringements of the above specified letters patent No. 698,542.'

The latter part of this paragraph contains the affirmative averment that notice was given, but it will be observed that the date is not mentioned. We can find in the original record in Drum v. Turner no amendment of the bill changing the situation as regards notice. Defendant's answer, paragraph 9, contains the following:

'This defendant admits that the complainant, acting in pursuance of or in accordance with the plans formulated by and to which complainant C. M. Leonard, and John Wunder and others, aforesaid, are parties, sent notices to customers and prospective customers of this defendant, in which reference was made to a pretended infringement of the said Norcross patent, which notices in the month of September, 1911, were brought to the attention of this defendant,' etc.

Then followed averments that the notices were to damage defendant's business and that he demanded of plaintiff that he either discontinue the notices or bring suit for infringement, etc. This excerpt may be taken as an admission that the notice of infringement of which complainant specified no date occurred as early as in September, 1911. Paragraph 25 says:

'This defendant denies all unlawful acts with which he is by said bill charged,' etc.

These last two averments in the answer are sufficient, we think, to put in issue a charge that defendant was notified as required by section 4900 earlier than September, 1911. We cannot find in the record of Drum v. Turner any proofs upon the subject of notice, and of course none of marking. We do find at pages 658 et seq. of the accounting record a 'list of exhibits filed by the respective parties in this proceeding' under the heading 'Plaintiff's Accounting Exhibits' the following: 'No. 16, letter Drum to Turner of Aug. 23, 1911,' offered at page 127 of that record. At the page of the accounting record referred to (127) appears the following:

'Mr. Paul: Counsel for plaintiff offers in evidence a letter from John L. Drum to the defendant C.A.P. Turner dated August 23, 1911, and requests that the same be marked 'Plaintiff's Accounting Exhibit No. 16.' And it is conceded by defendant's counsel that this letter was received by defendant about the date that it bears.'

A copy of this letter appears in a typewritten sheet near the end of the 'Book of Exhibits' made up for the appeals now before us. It is a notice of infringement to Turner, and so far as we can gather it is the only evidence of a notice of infringement under section 4900. Plaintiff did not rely upon the contention, found in his favor by the master and now urged, that the pleadings presented no issue of notice of infringement, but he offered the letter and it was received as part of his case on the accounting. This date, August 23, 1911, established the end of the first period and the beginning of the second.

The master found August 23, 1911, as the date of notice to defendant. In the excerpt from his report, next set forth, his statement that the bill of complaint alleges that notice was given on that day is incorrect. We are unable to find any such averment in the bill. He says (Record 687):

'The bill of complaint is silent as to the marking, but it alleges that notice was given, as hereinbefore stated, on August 23, 1911. This notice was in substance admitted by the answer and proved by plaintiff in his Accounting Exhibits Nos. 16 to 17-- 3 inclusive. The

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