Grier Bros Co. v. Baldwin

• Decision Date: 16 April 1920
• Docket Number: 2535.
• Citation: 265 F. 481
• Parties: GRIER BROS. CO. v. BALDWIN et al.
• Court: U.S. Court of Appeals — Third Circuit

265 F. 481

GRIER BROS. CO. v. BALDWIN et al.

No. 2535.

United States Court of Appeals, Third Circuit.

April 16, 1920

Bakewell & Byrnes, of Pittsburgh, Pa. (Brown, Stewart & Bostwick, G H. Parmelee, G. E. Stebbins, and C. P. Byrnes, all of Pittsburgh, Pa., of counsel), for appellant.

James Q. Rice, of New York City, and James K. Bakewell, of Pittsburgh, Pa., for appellees.

Before BUFFINGTON, WOOLLEY, and HAIGHT, Circuit Judges.

BUFFINGTON Circuit Judge.

In this case, Frederic E. Baldwin and the John Simmons Company citizens of New York state, filed a bill in equity in the court below against the Grier Bros. Company, a citizen of Pennsylvania, invoking its jurisdiction on such diversity of citizenship. The bill charged unfair competition. By the same bill, invoking jurisdiction on the ground of patent subject-matter, the same plaintiffs, being the owners of reissue patent No. 13,542 on No. 821,580, issued to said Baldwin on May 22, 1906, for an acetylene gas lamp, charged the same defendant with infringement thereof. On application for a preliminary injunction on both causes of action, the court below, in an opinion reported at 210 F. 560, held the cause of action for unfair competition was established, and granted the preliminary injunction prayed for. As to the second cause of action, viz. infringement of the patent, it deferred action by injunction until final hearing. On such final hearing that court, pursuant to an opinion reported at 215 F. 740, entered a decree, holding the reissue patent valid and infringed, and that the defendant was also guilty of unfair competition. On appeal, this court, pursuant to an opinion reported at 219 F. 735, 135 C.C.A. 433, affirmed the lower court's decree on the cause of action of unfair competition, but reversed it on the patent cause of action. Pursuant to this opinion, which was rendered January 22 1915, the record, with this court's mandate, was remitted to the court below on February 24, 1915. No steps were taken in the court below by either party to enter a decree in accordance with the mandate for almost a year, when, at the plaintiffs' suggestion, the decree was entered to which we later refer.

In this intervening year, the plaintiffs were engaged in other litigation on this patent. They had filed a bill in the Southern district of New York, charging a third party with infringement of this patent. In this case the court on February 6, 1915, filed an opinion, reported as Baldwin v. Abecrombie & Fitch Co., 227 F. 455, holding the patent valid and infringed. On appeal, this decree was affirmed by the Circuit Court of Appeals of the Second Circuit in an opinion dated November 9, 1915, and reported at 228 F. 895, 143 C.C.A. 293, and, as we hereafter note, the case was affirmed by the Supreme Court at 245 U.S. 198, 38 Sup.Ct. 104, 62 L.Ed. 240. On December 20, 1915, the defendant in the said case presented to the Supreme Court of the United States a petition for a writ of certiorari to review the foregoing opinion, and on January 10, 1916, the Supreme Court granted such writ. 239 U.S. 649, 36 Sup.Ct. 284, 60 L.Ed. 485. Such being the situation, and the plaintiffs being, as we have seen parties to the then pending cause in the Supreme Court of the United States, they on January 5, 1916, presented to the court below a form of decree for entry in the present case in pursuance of the mandate of this court, which decree stated it was on motion of plaintiffs' counsel, and was entered on said day. As to the cause of action for unfair competition, such decree adjudged the defendant guilty of unfair competition, referred such cause of action to a master for ascertainment of damages, and granted a permanent injunction enjoining defendant from selling the lamps which constituted unfair competition. As to the patent cause of action, the decree dismissed the bill.

After this decree was thus entered on January 5, 1916, the term ended without further action, and it so remained for some two years, when on January 26, 1918, the plaintiffs filed a bill to review the decree which had been entered on their motion on January 5, 1916. The ground on which this bill of review rested was the recited decision of the Supreme Court made subsequent to the entry of the decree in the court below. The latter court, in an opinion printed in the margin, ^[1] sustained this contention, and held that as to the sixth paragraph of the decree of January 5, 1916, which read: '(6) That the bill of complaint herein as to infringement of reissue patent No. 13,542, in suit, be and the same hereby is dismissed'-- be vacated, and that it now be decreed the said patent was valid and infringed. Accordingly, on November 7, 1919, such decree vacating the said sixth paragraph of the decree of January 5, 1916, awarding a permanent injunction and directing an accounting, was entered. Thereupon this appeal was taken, and the question before us is whether, under the facts and circumstances of this case, the bill to review would lie.

It will be noticed, from the recital of the different steps in this litigation, that the situation is one of the plaintiffs' own creation. After the decision of this court was made, but before its mandate went down, the plaintiffs knew of the decision of the District Court in the case in the Second Circuit, but they made no request to this court to withhold its mandate. After the mandate went down, and before a decree pursuant thereto had been entered in the court below, they knew of the affirmance of the latter case by the Circuit Court of Appeals of the Second Circuit, and that the two circuits were in conflict; but they made no request to either court in this circuit to have the entry of a decree withheld. On the contrary, with knowledge that the Supreme Court had on December 20, 1915, under consideration a petition for certiorari in the case in the Second Circuit, the plaintiffs became the actors in the quiescent case in this circuit, and, without advising the court of the pendency of the matter in the Supreme Court, they prepared and on their motion had entered on January 5, 1916, the decree of dismissal, and thereafter, when the Supreme Court had on January 10, 1916, granted the certiorari, they allowed the term to end without any move to suspend, open, or vacate the said decree of January 5, 1916. Under such circumstances, and in view of the fact that the entry of the decree at once gave them affirmative relief on their cause of action for unfair competition, it is quite manifest that the plaintiffs themselves, of their own motion and without compulsion from any one, chose to change the status of the case by themselves causing the decree, of which they afterwards complained, to be entered. At the time they prepared and had the decree entered, they knew the situation was one where they were making possible the bringing about of just such a situation as they now complain of. Such being the facts, the plaintiffs themselves, by their own course, brought about this situation. We start with the fact that, if seeming hardship ensues, the plaintiffs, and not the laws, have brought it on themselves.

Turning, now, to their alleged right by a bill of review to relieve themselves of this self-created situation, we note the general principle that a bill of review will not lie where the decree in question was a consent one. Thompson v. Maxwell, 95 U.S. 391, 24 L.Ed. 481. Now, while the decree before us is not a decree based on a compromise or consent of the parties, yet as the entry of a decree dismissing the bill as to the patent was one in favor of the defendant, and the defendant was taking no step, it would seem that there is substantial ground for contending that, when the plaintiffs themselves took the matter into their own hands, and themselves prepared, moved, and had entered the decree which dismissed their patent bill, such voluntary action on their part, in entering the decree in favor of their adversary, was not only in form, but in substance, and by positive act on their part, a consent, and, so far as they were concerned, a consent decree.

But, passing by the voluntary consent nature of this decree, we turn to the legal question whether the subsequent decision of the Supreme Court is a ground for a bill of review. Before entering on that legal question, we note the unsettling effect such a holding would have on the whole system of patents, if a final decree holding a patent invalid can be vacated years afterwards because, in a case between other litigants, in another jurisdiction, the same patent has been adjudged valid by the Supreme Court of the United States.

Nor must we be misled by the at first sight seemingly grave situation of a patentee whose patent has in one circuit been adjudged valid by the Supreme Court, at the same time adjudged invalid by a Circuit Court of Appeals in another circuit. For such a situation is not one either created by law, but wholly by the plaintiffs not availing themselves of the opportunity the law afforded them of preventing it. For when the Circuit Court of Appeals of the Second Circuit held this patent valid and infringed, and there was a conflict of decision between two Circuit Courts of Appeals, such situation gave the plaintiffs reasonable ground for applying to the Supreme Court for a certiorari to review the adverse decree of this court. We do not say the plaintiffs were bound to do so; we only say they could have so petitioned, and, if an anomalous situation has arisen, it is not because the law created it, nor is it a fault of our patent system, but it is one that might have been avoided by acts of commission or omission of the plaintiffs: (a) In petitioning the Supreme Court for a certiorari in the Third Circuit case, when, on ...