Hartford-Empire Co. v. Shawkee Mfg. Co.

• Decision Date: 21 December 1944
• Docket Number: No. 5203.,5203.
• Citation: 147 F.2d 532
• Parties: HARTFORD-EMPIRE CO. v. SHAWKEE MFG. CO. et al.
• Court: U.S. Court of Appeals — Third Circuit

147 F.2d 532 (1944)

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

No. 5203.

Circuit Court of Appeals, Third Circuit.

Heard on Motion to Amend Mandate December 8, 1944.

Decided December 21, 1944.

Max Swiren, of Chicago, Ill., for plaintiff.

Walter J. Blenko, of Pittsburgh, Pa., for defendant.

Before BIGGS, MARIS, and JONES, Circuit Judges.

MARIS, Circuit Judge.

The history of this case is fully disclosed in the prior opinions of this court (68 F. 2d 726, 137 F.2d 764) and in the opinion of the Supreme Court on certiorari (322 U.S. 271, 64 S.Ct. 1014) and need not be repeated here. It is only necessary to quote the last two paragraphs of the Supreme Court's opinion (322 U.S. 271, 273, 274, 64 S.Ct. 1014, 1015), which are as follows:

"The prayer for relief of Shawkee and the others was that the court adjudge that Hartford did not come into court with clean hands, and that they be fully freed from further obligations under the judgments against them. This relief should be granted. They further prayed that a master be appointed by the Circuit Court of Appeals to render an accounting of costs incurred in these and former proceedings, moneys paid by them to Hartford pursuant to the challenged judgments, and damages sustained by them because of Hartford's unlawful use of its patent. Whether this type of relief will be granted must depend upon further proceedings in the District Court which entered the judgment of infringement.

"The judgment of the Circuit Court of Appeals is reversed. The cause is remanded to it with directions to set aside its 1934 judgment, recall the mandate, and dismiss the appeal; and issue mandate to the District Court with directions to set aside its judgment finding Hartford's patent valid and infringed, deny Hartford all relief against infringement of this patent and permit Shawkee and the others to bring such further proceedings as may be appropriate in accordance with their prayer for relief."

On June 30, 1943 this court, pursuant to our opinion filed on that date, 137 F.2d 764, had entered an order denying the defendants' petition to vacate and set aside our judgment entered January 11, 1934, which had dismissed the appeal taken by the defendants from a judgment or decree entered against them in the district court. The judgment of the Supreme Court entered on May 15, 1944, as transmitted to us by its mandate, provided:

"On consideration whereof, It is now here ordered and adjudged by this Court that the judgment of the said United States Circuit Court of Appeals in this cause be, and the same is hereby, reversed with costs; * * * "And it is further ordered, That this cause be, and the same is hereby, remanded to the said Circuit Court of Appeals for further proceedings in conformity with the opinion of this Court."

Pursuant thereto this court on July 10, 1944, entered a judgment, which was transmitted to the District Court by mandate, as follows:

"The mandate of the Supreme Court of the United States in this cause having been received,

"On consideration whereof, it is now here ordered and adjudged as follows:

"(1) The judgment entered by this court in this cause on January 11, 1934 68 F.2d 726 is set aside;

"(2) The mandate issued by this court to the district court in this cause on October 17, 1934 is recalled; and

"(3) The cause is remanded to the district court with directions

"(a) To set aside its judgment finding the plaintiff's patent valid and infringed,

"(b) To deny the plaintiff all relief against infringement of this patent, and

"(c) To permit the defendants to bring such further proceedings as may be appropriate in accordance with their prayer for relief."

After the receipt of our mandate the District Court, on October 23, 1944, 57 F.Supp. 636, entered the following judgment:

"This cause having come on for hearing upon the judgment to be entered in conformity with the mandate of the United States Circuit Court of Appeals issued July 10, 1944, and upon the motion of the defendants, and the matter having been fully heard and the Court having the benefit of representations and arguments of counsel, and the Court being fully advised in the premises,

"It is ordered, adjudged and decreed that:

"1. The opinion of this court filed June 27, 1933, finding that a preliminary injunction should be issued against the defendants be, and the same is hereby, withdrawn and set aside.

"2. The decree and order by this court on June 27, 1933, directing that a writ of injunction issue out of and under the seal of this court directed to the defendants be, and the same is hereby, set aside and annulled.

"3. The preliminary writ of injunction issued out of and under the seal of this court on or about June 28, 1933, directed to appellants and issued pursuant to the aforementioned order and decree made June 27, 1933, be, and the same is hereby, set aside and annulled.

"4. The order and decree of reference made by this court on October 19, 1934, and all other orders, decrees, judgments and findings entered by this court in pursuance of the mandate of the United States Circuit Court of Appeals for the Third Circuit filed October 17, 1934 and now recalled by that court pursuant to its mandate of July 10, 1944, and all writs of injunction issued by or under the seal of this court pursuant to such order and decree of reference, or such other orders, decrees, judgments or findings, be, and they are all hereby, set aside and annulled.

"5. All judgments, orders and decrees warranting or granting any relief to the plaintiff, be, and the same are hereby, set aside and annulled.

"6. All relief prayed by the plaintiff be, and the same is hereby, denied.

"7. Without impairing the reservation of jurisdiction by this court, the complaint of the plaintiff (denominated `bill of complaint') be, and the same is hereby, dismissed.

"8. Jurisdiction be, and the same is hereby, reserved by this court to hear and determine any and all counter-claims, cross-claims or other applications for relief that may be authorized by the mandate of the United States Circuit Court of Appeals for the Third Circuit issued July 10, 1944, or which this court may entertain for the purpose of doing equity and justice in the premises."

On the same day the District Court refused to make certain findings of fact and conclusions of law requested by the defendants. The latter had asserted that these findings and conclusions were required to be made by the mandate of the Supreme Court. The District Court, 57 F.Supp. 636, held that it was governed by the mandate issued to it by our court which, it thought, did not require the findings and conclusions in question to be made at this time. The defendants thereupon applied to this court for the amendment of our mandate by adding thereto the...