Gillespie v. Norris, 14674.

• Decision Date: 28 February 1956
• Docket Number: No. 14674.,14674.
• Citation: 231 F.2d 881
• Parties: Homer E. GILLESPIE, Catherine L. Gillespie and Gillespie Games Company, a corporation, Appellants, v. Coma F. NORRIS, individually and doing business as C. F. Norris Manufacturing Company, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

231 F.2d 881 (1956)

Homer E. GILLESPIE, Catherine L. Gillespie and Gillespie Games Company, a corporation, Appellants, v. Coma F. NORRIS, individually and doing business as C. F. Norris Manufacturing Company, Appellee.

No. 14674.

United States Court of Appeals Ninth Circuit.

February 28, 1956.

Eric A. Rose, Albert D. White, Long Beach, Cal., for appellants.

William C. Babcock, Frederick Mueller, Long Beach, Cal., for appellee.

Before FEE and CHAMBERS, Circuit Judges, and WALSH, District Judge.

JAMES ALGER FEE, Circuit Judge.

This action for infringement of patent was brought by filing complaint. An answer was then filed containing general denials and an affirmative defense, which sets up several prior patents claimed to anticipate the device patented and to show that it lacked novelty, utility and invention, and a "counterclaim", which is actually a claim for damages against plaintiffs as a result of conspiracy to use the letters patent in restraint of trade. An "Answer to Counter-claim" appears in the record, but the denials apparently do not refer to the paragraphs of the answer which embody the counterclaim. As to whether issues were created is questionable. There was also an affirmative defense to the "counterclaim" for failure to state sufficient facts, but again the application is doubtful. Defendant made a motion for summary judgment "dismissing the complaint and for the relief demanded in defendant's counterclaim" and, in the alternative, "for an order striking plaintiff's complaint and dismissing the action with prejudice" for failure of plaintiff to answer interrogatories.

The judgment, after reciting that "there is no genuine issue of fact," reads: "And the Court having made an order granting Defendants' Motion for Summary Judgment and to Dismiss this action on the merits, it is hereby Ordered, Adjudged and Decreed" that (1) the patent in suit is invalid as to certain claims, and (2) this "action is hereby dismissed on the merits * * *."

It is with some hesitation that we have decided to dismiss the appeal. The points upon which this action is taken were not raised by the parties, and no argument has been heard upon these. The form of the judgment gives us great trouble. There is doubt as to whether the intention was to enter a summary judgment, a partial summary judgment or a judgment on the merits. As a result, there is some confusion as to whether Rule 54(b) or 56(d), Federal Rules of Civil Procedure, 28 U.S.C.A., applies.

In any event, the issues raised by the counterclaim were never presented or adjudicated. The motion for summary judgment, upon which this case was partially disposed of, asks for "a summary judgment in the Defendants' favor dismissing the complaint and for the relief demanded in Defendants' counterclaim." There was no order of the court disposing of these allegations of the counterclaim or the issues thereon, so far as the record before us discloses. On the other hand, if the purpose were to dispose of only part of the issues of fact by summary judgment, the order required by Rule 56(d) should have been entered. Upon this basis, the matter would necessitate remand. From the record, it seems this entire claim of defendant was disregarded from the start by the parties. If defendant should insist upon going to trial thereon after the portion of the record before this Court is finally adjudicated, it is difficult to see how a formal disposition thereof could be prevented. This would work an injustice.

The appeal here was taken from what is denominated a "summary" judgment. Actually, it appears the judgment was entered after submission on the merits of the claim of plaintiff. After the filing of the answer of defendant, there was served upon plaintiff "Defendant's Interrogatories to Plaintiff" and "Request for Admission of Facts." Both of these were filed September 4, 1954. Plaintiff did not file response to either of these formal demands within ten days as required by Rule 36, or fifteen days, as required by Rule 33, or at any time until October 9, 1954. Thereupon, on October 16, defendant filed a motion for summary judgment and, in the alternative, for an order striking out plaintiff's complaint because of the default of plaintiff. Affidavits were filed relating chiefly to an issue of fact as to whether there had been a prior public use of a device identical with the patent in 1946. Thereupon, plaintiff filed counter-affidavits on this point and likewise affidavits purporting to explain and excuse the default.

In the responses which were thus on file before the motion for summary judgment, plaintiff made many admissions, but also made qualified denials which raised questions of fact. The W. E. Andrews patent, entitled "Game...