Great Northern Ry. Co. v. General Railway Signal Co.

• Decision Date: 19 April 1932
• Docket Number: No. 9247.,9247.
• Citation: 57 F.2d 457
• Parties: GREAT NORTHERN RY. CO. v. GENERAL RAILWAY SIGNAL CO.
• Court: U.S. Court of Appeals — Eighth Circuit

57 F.2d 457 (1932)

GREAT NORTHERN RY. CO. v. GENERAL RAILWAY SIGNAL CO.

No. 9247.

Circuit Court of Appeals, Eighth Circuit.

February 29, 1932.

Rehearing Denied April 19, 1932.

Thomas Ewing, of New York City (F. G. Dorety, of St. Paul, Minn., on the brief), for appellant.

Amasa C. Paul, of Minneapolis, Minn., and Clifton V. Edwards, of New York City (Neil D. Preston, of Rochester, N. Y., and Maurice M. Moore, of Minneapolis, Minn., on the brief), for appellee.

Before KENYON, VAN VALKENBURGH, and GARDNER, Circuit Judges.

KENYON, Circuit Judge.

Appellee, herein called the signal company, brought suit in the United States District Court for the District of Minnesota against appellant, herein termed the railway company, for the infringement of a certain patent, No. 1,551,515, for improvements in an automatic train control system, which patent was applied for by one Howe, whose rights later passed to the signal company by assignment. The railway company secured its alleged rights from the Sprague Safety Control & Signal Corporation, which installed the alleged infringing system and defended the suit for the railway company. The original bill of complaint did not set forth any particular claims that were infringed, but charged generally infringement, thus bringing into the case all the many claims of the patent. The answer of the railway company alleged that "Letters Patent No. 1,551,515 herein sued upon and each of the claims thereof is invalid and void," and it also denied infringement.

The District Court held there was no infringement of the patent and dismissed the case. General Ry. Signal Co. v. Great Northern Ry. Co., 21 F.(2d) 697.

Upon appeal to this court the decree of the District Court was reversed, and the Howe patent was held to be valid and infringed. The case was remanded to the trial court. This court in concluding the opinion said: "We think the Howe patent is infringed by the device of appellee, and that the decree should be reversed, with instructions to set the decree aside, to enter a decree of infringement, and to take such other and further action as is in support thereof. It is so ordered." General Ry. Signal Co. v. Great Northern Ry. Co., 43 F.(2d) 790, 807.

The trial court upon return of the case entered a decree on the mandate, setting aside the decree formerly entered on October 6, 1927, and held the signal company to be the owner of letters patent No. 1,551,515, as assignee of Howe; that said letters patent were good and valid in law as to claims 8, 9, 10, 13, 17, 18, 19, 20, 23 to 34, inclusive, 37, 41 to 49 inclusive, 51, 55 to 60, inclusive, 62, 63, 65, 66, 67, 68, 70, 71, and 72 thereof; that the railway company had infringed said letters patent, and particularly the claims hereinbefore specified.

Appellant claims the court erred in this decree and went beyond the terms of the mandate.

The reason for this second appeal is made clear by the following assignments of error:

"4. That the Court erred in making any ruling respecting any claims of the patent in suit other than those mentioned in the opinion of the Court of Appeals, namely, Claims 9, 10, 23, 30, 34, 43, 48, 56, 57 and 58.

"5. That the Court erred in making any ruling respecting claims 13, 26, 44, 45 and 72, in none of which is specified a time element associated with the forestalling device.

"6. That the Court erred in finding claim 72 valid in the Howe patent in suit."

The real point in this controversy is whether the decree of the trial court goes beyond the mandate. That depends on what was decided by this court when the case was originally before it. The patent covered a large number of claims. The forty-five claims involved did not exhaust all the claims of the patent. Mr. Edwards, one of the counsel for the signal company, stated at the commencement of the trial of the case: "Some time ago in answer to a request from Mr. Ewing we selected out of the large number of claims in the patent in suit, the following upon which we would rely, and I read them on the record. They are 8, 9, 10, 13, 17, 18, 19, 20, 23, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 37, 41, 42, 43, 44, 45, 46, 47, 48, 49, 51, 55, 56, 57, 58, 59, 60, 62, 63, 65, 66, 67, 68, 70, 71 and 72. While we charge infringement of all these claims, your Honor, I may mention the following ten claims which are typical of all of them and upon which we rely and which I think will be sufficient for consideration. They are 9, 10, 23, 30, 34, 43, 48, 56, 57 and 58." Mr. Ewing was of counsel for the railway company, or the Sprague Company, and assented evidently to this arrangement, and the case was tried on the theory that the ten claims specified were typical of all the forty-five claims. The appeal in this court was a mere continuation of the suit below. 3 C. J. p. 320, § 34; Gulf Refining Company of Louisiana, Norvell et al. v. United States, 269 U. S. 125, 46 S. Ct. 52, 70 L. Ed. 195.

The opinion of this court was written by Judge Stone, and is most exhaustive in its treatment of all the questions involved. It should be consulted to ascertain what was intended by the mandate. It is in effect a part of the mandate. In re Sanford Fork & Tool Company, Petitioner, 160 U. S. 247, 16 S. Ct. 291, 40 L. Ed. 414; State of Oklahoma v. State of Texas, United States, Intervener, 256 U. S. 70, 41 S. Ct. 420, 65 L. Ed. 831; Gulf Refining Company of Louisiana, Norvell, et al. v. United States, 269 U. S. 125, 46 S. Ct. 52, 70 L. Ed. 195. We quote from Judge Stone's opinion, General Ry. Signal Co. v. Great Northern Ry. Co. (C. C. A.) 43 F.(2d) 790, 799:

"Claims Involved.

"Howe contends that his device is protected by ten typical claims which are infringed. Those are claims 9, 10, 23, 30, 34, 43, 48, 56, 57, and 58. Counsel for Howe state:

"`For convenience these claims may be divided into groups and one claim taken as typical of the group as follows:

"`Claim 9, typical of 9, 34 and 10.

"`Claim 30, typical of 30, and 43.

"`Claim 58, typical of 23, 48, 56, 57 and 58.

"`Of the claims relied upon, claims 9 and 34 are the broadest.'

"Those three claims (9, 30, and 58), selected as typical, are as follows: * * *"

The opinion then sets forth in full claims 9, 30, and 58. Judge Stone did not take up and consider one by one the claims of the Howe patent, but limited his discussion to the typical claims. It is now insisted by the railway company that this court upheld as valid and infringed only the ten claims which were taken as typical in the trial court, namely, 9, 10, 23, 30, 34, 43, 48, 56, 57, and 58, and that the District Court had no right to enter a decree whatever affecting the other claims.

There is no need of spending any time on the proposition that the proceedings taken in the trial court upon the reversal of a judgment or decree must conform to the mandate of the Appellate Court. That goes without saying.

When the case was brought it was the undoubted intent, as shown by the pleadings, to contend that all the forty-five claims of letters patent No. 1,551,515 referred to in the complaint were infringed. The request to pick typical ones out of the large number of claims apparently came from counsel for the railway company. If the decree of the trial court dismissing the bill had been affirmed by this court there is no doubt that the railway company would have been protected against a suit by the signal company for infringement as to any one of the claims. Marshall v. Bryant Electric Co. (C. C. A.) 185 F. 499; Union Steam Pump Co. v. Manton-Gaulin Mfg. Co. (D. C.) 272 F. 773. All of these claims would have been res adjudicata and the signal company could have been restrained by a court of equity from bringing further suits for infringement as to these claims. Such is the doctrine of Kessler v. Eldred, 206 U. S. 285, 27 S. Ct. 611, 51 L. Ed. 1065. The series of cases arising from litigation over the Marshall patent, which was "for an insulating lining for the outer metallic shell of an incandescent lamp socket," etc., Marshall v. Pettingell-Andrews Co. (C. C.) 153 F. 579; Marshall v. Pettingell-Andrews Co. (C. C. A.) 164 F. 862; Bryant Electric Co. v. Marshall (C. C.) 169 F. 426; Marshall v. Bryant Electric Co. (C. C. A.) 185 F. 499, are interesting on this question. In the first case of the series, Marshall v. Pettingell-Andrews Co. (C. C.) 153 F. 579, it was held by the District Court that claims 5 and 9 were void in view of the prior art. The Circuit Court of Appeals in Marshall v. Pettingell-Andrews Co., 164 F. 862, sustained the decree of the trial court, and held claims 5 and 9 to be void. Marshall then brought a suit in equity in the District Court of Massachusetts against the Western Electric Company, in which he referred to the holding in the other suit that claims 5 and 9 were void, and in his claim of infringement excluded these. The patent next appears in Bryant Electric Co. v. Marshall (C. C.) 169 F. 426, which was a bill in equity to enjoin Marshall from proceeding with the second suit. Reference is there made to Marshall v. Pettingell-Andrews Company, supra, and to the limitation of complainant's case there to claims 5 and 9. To this bill defendant demurred upon a number of grounds, one of which was that in the first suit the court passed only upon claims 5 and 9 of the patent, while in the second suit these claims were excluded and only the other claims of the patent were relied on, and that therefore the invalidity of the Marshall patent generally was not res adjudicata. Complainant contended that the decree in the first suit, although the opinion was limited to claims 5 and 9, barred proceedings between the same parties to restrain similar infringement of other claims of the Marshall patent. The court pointed out that the Circuit Court and the Circuit Court of Appeals in the first suit considered no claims of the Marshall patent other than claims 5 and 9, saying, page 429 of 169 F.:

"The court is not here required to decide that a...