Hartford-Empire Co. v. Hazel-Atlas Glass Co.

• Decision Date: 30 June 1943
• Docket Number: No. 4414,5203.,4414
• Citation: 137 F.2d 764
• Parties: HARTFORD-EMPIRE CO. v. HAZEL-ATLAS GLASS CO. HARTFORD-EMPIRE CO. v. SHAWKEE MFG. CO. et al.
• Court: U.S. Court of Appeals — Third Circuit

137 F.2d 764 (1943)

HARTFORD-EMPIRE CO. v. HAZEL-ATLAS GLASS CO.

HARTFORD-EMPIRE CO. v. SHAWKEE MFG. CO. et al.

Nos. 4414, 5203.

Circuit Court of Appeals, Third Circuit.

June 30, 1943.

Stephen H. Philbin, of New York City (Maxwell Barus, of New York City, on the brief) for Hazel-Atlas.

Wm. B. Jaspert, of Pittsburgh, Pa., for Shawkee Mfg. Co. et al.

Francis W. Cole, of Hartford, Conn. (Stebbins & Blenko, of Pittsburgh, Pa., Thomas G. Haight, of Jersey City, N. J., and Edgar J. Goodrich, of Washington, D. C., James M. Carlisle, of Hartford, Conn., Robson D. Brown, of Hartford, Conn., on the brief), for Hartford-Empire Co.

Thurman Arnold, Asst. Atty. Gen., and Hugh B. Cox, Samuel S. Isseks, and Lawrence S. Apsey, Sp. Assts. to the Atty. Gen., for the United States, amicus curiae.

Before BIGGS, MARIS, CLARK, and JONES, Circuit Judges.

On Petitions for Leave to File Bills of Review.

JONES, Circuit Judge.

Hazel-Atlas Glass Company and Shawkee Manufacturing Company, defendants respectively in the above-entitled suits, each filed a petition in this court for leave to file a bill of review in the District Court in respect of the final decrees severally entered therein. The petitions alleged in substantial part that a fraud had been practiced upon this court in connection with the appeal in the Hazel-Atlas case and that it had induced this court's order (59 F.2d 399, 413) reversing the decree of the District Court in that case (39 F.2d 111, 120). The decision in the Hazel-Atlas case in turn compelled the decree of the District Court in Hartford-Empire's favor in its suit against Shawkee and others which on appeal was affirmed by this court. See Shawkee Mfg. Co. et al. v. Hartford-Empire Co., 3 Cir., 68 F.2d 726.

As the petitions relied solely upon the fraud allegedly practiced upon this court and set forth nothing appropriate for the District Court's inquiry upon bills of review in respect of the subject-matter of the suits in that court, leave to file the bills below was accordingly denied. However, adopting by analogy the procedure followed in the cases of Art Metal Works v. Abraham & Straus, Inc., 2 Cir., 107 F.2d 940, and Id., 2 Cir., 107 F.2d 944, certiorari denied 308 U.S. 621, 60 S.Ct. 293, 84 L.Ed. 518, we granted leave to the petitioners to amend the prayers of their respective petitions so as to seek relief from this court, on the ground of the alleged fraud, against the orders heretofore entered in the above appeals. See 3 Cir., 125 F.2d 976, 977. The petitions were amended accordingly and, as so amended, are now before us.

In 1928 the Hartford-Empire Company sued the Hazel-Atlas Glass Company in the District Court for the Western District of Pennsylvania for the alleged infringement by Hazel-Atlas of Hartford-Empire's patent (No. 1,665,391), known as the Peiler patent. The District Court, deeming the patent to be at best but a slight improvement in a well developed art (automatic feeders for mechanical glass bottle blowing), held that the claims were not entitled to a broad construction and that, with the Peiler patent so construed, Hazel-Atlas had not infringed. 39 F.2d 111. On appeal this court (one judge dissenting) considered Peiler a pioneer in what was thought to be a meagre art in the glass-blowing industry and that the claims of the patent were therefore entitled to a broad construction. So construed, the validity of the patent was sustained and Hazel-Atlas was held to have infringed the forty-four claims (out of the sixty of the patent in suit) upon which the plaintiff relied. The decree of the District Court was accordingly reversed (59 F.2d 399, 413) and the record remanded "with instructions to enter a decree holding the plaintiff's patent valid and the claims sued on infringed, and directing an accounting."

The opinion for the majority in support of the order thus entered by this court made frequent references to and quoted extensively from an article in a trade journal known as the National Glass Budget. The article purported to be the work of one William P. Clarke, who had signed it as author, and was titled, — "Introduction of Automatic Glass Machinery; How Received by Organized Labor—By William P. Clarke, President, American Flint Glass Workers Union." After alluding to the historic opposition of glass workers to mechanical glass-blowing appliances, the so-called Clarke article went on to show that, prior to gob-feeders, the only successful automatic feeder for a glass-blowing machine had been that covered by the Owens patent, which, like another patent (Brooke), operated on the principle of stream feed into a mold (the former by suction and the latter by flow) of molten glass of high temperature and low viscosity, unlike the automatic plunger gob-feeder (Peiler's patent). Appended to the article was a chart purporting to show the ascending curve of the increased glass bottle production from the use of gob-feeders from 1917 onward, and the almost concomitant flattening of the production curve of manufacture under the Owens patent which, up to that time, had increased both continuously and regularly. The Clarke article, which had not been introduced in evidence in Hartford's suit against Hazel-Atlas, got into the record merely as a part of the voluminous file-wrapper history of the Peiler patent in its long and precarious course in the Patent Office. Neither had it been used nor adverted to at trial; nor was it referred to in the briefs below nor in the exhaustive opinion of the trial judge.

The fact is that the article had not been written by Clarke, but by one R. F. Hatch, an attorney in the patent department of Hartford, which by that time had become the assignee of the Peiler patent application. Hatch not only prepared the article and its accompanying chart but he also procured Clarke's signature thereto as the author, and caused it to be published in the National Glass Budget with the understanding, assented to by the publisher, that Hartford should not be connected with it. The article appeared in the July 17, 1926 issue of the National Glass Budget. R. D. Brown, Vice-President and Patent Counsel of Hartford, and V. M. Dorsey, a patent attorney for Hartford, brought the published article to the attention of the Patent Office on October 12, 1926, with special reference to the Peiler application (Serial No. 294,792), whereon the patent (No. 1,665,391) issued on January 3, 1928.

It is unnecessary for present purposes to relate in detail how Hatch, aided and abetted by Brown and Dorsey as well as by H. W. Carter, of Owens Bottle Company,¹ deliberately set about "to get the production curve and a few statements in regard to gob feeding into print" (from a source ostensibly hostile to labor-saving glass-blowing machinery) for use in the Patent Office in connection with the Peiler application which had already been rejected on the ground that its claims were not patentable. As the matter then stood, the Peiler application was confronted with apparently insurmountable Patent Office opposition. That Hatch, Hartford's employee, and not Clarke, the labor leader, wrote the article and that the purpose of the methods employed in having it published was as above indicated may now be taken as indisputably established. But, sordid as is the story concerning the genesis of the Clarke article and the deceptive design and use of its spurious authorship, still it does not qualify as after-discovered evidence in either the Hazel-Atlas or the Shawkee suit.

Counsel for Hazel-Atlas were aware at least by the time of the trial of their case in April 1929 that Hatch was the author of the Clarke article. Although then so informed, counsel for Hazel-Atlas deliberately chose not to go into the matter of the article's real authorship, fearing that if they should refer to the article (which was not in evidence), they might thereby call attention to the statements therein contained as to the increased production from gob feeders as compared with stream feeders, which could not be successfully refuted. (See affidavit of Edmund P. Wood, Esq., of Cincinnati, whom both sides accredit.) There is no need to burden this opinion with a detailed recital of how Mr. Wood and his father and former senior partner, William R. Wood, Esq., came by their information. They were counsel for the Nivison-Weiskopf Company which was also sued by Hartford for alleged patent infringement. Hartford-Empire Co. v. Nivison-Weiskopf Co., 6 Cir., 58 F.2d 701. That suit came on for trial in the District Court for the Southern District of Ohio shortly after the trial of the Hazel-Atlas case in Pittsburgh, which the Messrs. Wood had alternately attended from time to time. Suffice it to say that Clarke had told William R. Wood in September 1926 that he had not written the article but that Hatch had; and Hatch had freely admitted to Edmund P. Wood in February 1928 that he had written the article. It was this information which the Messrs. Wood imparted to counsel for Hazel-Atlas at the time of the trial of Hartford's suit against Hazel-Atlas in April, 1929.

In their brief on appeal to this court in the Hazel-Atlas case, counsel for Hartford, the appellant, cited and made reference to the Clarke article and its appended chart, which they reproduced in their brief, in support of the assertion that "It the Peiler plunger feeder Broke the Owens Domination". The only response made to this by counsel for Hazel-Atlas in their brief for the appellee was that the chart was misleading because "the curve for `gob feeders' starts with the year 1917" whereas Hartford's "paddle feeder which it asserts was a gob feeder went into commercial use in 1915"; that whatever portion of the gob-feeder production shown by the chart up to 1922 was made by plunger feeders "was made on plunger feeders developed by others, for plaintiff's Hartford's first plunger feeder was November, 1922"; and, finally, that the chart "is not competent evidence against the...