Hartford-Empire Co. v. OBEARNESTER GLASS CO.

• Citation: 95 F.2d 414
• Decision Date: 11 March 1938
• Docket Number: No. 10836.,10836.
• Parties: HARTFORD-EMPIRE CO. v. OBEARNESTER GLASS CO.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

95 F.2d 414 (1938)

HARTFORD-EMPIRE CO. v. OBEARNESTER GLASS CO.

No. 10836.

Circuit Court of Appeals, Eighth Circuit.

March 11, 1938.

Thomas G. Haight, of Jersey City, N. J. (William J. Belknap, of Detroit, Mich., Robson D. Brown, of Hartford, Conn., and John H. Bruninga, of St. Louis, Mo., on the brief), for appellant.

Lawrence C. Kingsland, of St. Louis, Mo. (Edmund C. Rogers, of St. Louis, Mo., on the brief), for appellee.

Before STONE, SANBORN, and WOODROUGH, Circuit Judges.

STONE, Circuit Judge.

April 22, 1926, appellant filed its complaint charging infringement of patents: Steimer No.1,564,909 and Peiler No. 1,573,742. The patents covered glass feeding machines. The accused device was a glass feeding machine of the so-called mechanical "plunger" type. A decree adjudging infringement of certain claims of these patents, enjoining infringement and ordering an accounting was entered December 17, 1928. That decree was affirmed in this court. Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 39 F.2d 769. The report of the master on the accounting was filed August 31, 1935. Certain exceptions were sustained and re-reference ordered November 7, 1936.

January 22, 1935, appellant filed a petition "For Supplemental Injunction or For Leave to File Supplemental Bill of Complaint." April 8, 1936, an order was entered denying this petition because "not timely filed and presented to the Court." From that order this appeal is brought.

Appellee raises two preliminary matters, either of which, if well founded, would prevent consideration of the merits of the objections to the order from which this appeal is taken. These contentions of appellee are not trivial but we think it unnecessary to discuss them as our determination upon the merits favors appellee. We will dispose of the appeal upon the merits of the order from which the appeal is taken.

The petition contemplates alternative matters. Primarily, a supplemental injunction in the original case filed on April 22, 1926. If that relief be denied, leave to file a supplemental bill in the above case. These matters require separate consideration.

I. Supplemental Injunction.

First as to the rule of law governing supplemental injunctions in patent infringement suits where the purpose is to enjoin use of something differing from the accused device found to have been an infringement.

Not infrequently it occurs that, after a bill charging infringement of a patent has been filed, the defendant changes to a thing different from that which is accused in the bill. If the plaintiff desires protection from the new thing, as an infringement, he has a choice of remedies or methods depending upon the stage of the case, the situation in the litigation, and the difference between the accused and the new thing. If the new thing is discovered before trial, it can be brought in by amendment (Panoualias v. National Equipment Co., 2 Cir., 269 F. 630, certiorari denied 256 U.S. 691, 41 S.Ct. 534, 65 L.Ed. 1174) or by supplemental bill (Equity Rule 34, 28 U.S.C.A. following section 723) or it may be the subject of a separate action. If the discovery is made after interlocutory decree determining infringement by the accused thing and granting injunction and accounting, the new thing may be brought into the action by attachment for contempt of the injunction decree, by motion for supplemental injunction, by introduction into the accounting proceeding before the master or by supplemental bill; or there may be a new action. If the discovery is made after final decree, the new thing may be brought in by attachment for contempt, by motion for supplemental injunction or, possibly, by supplemental bill; or there may be a new action. The above enumeration of possible remedies is merely a statement of such as have been entertained by various federal courts.¹ It is not an acceptance of all of them as the procedural policy of this court. Naturally, the stage of the litigation exerts some influence upon the propriety of use of certain of the above methods. For instance — amendment of the bill would vanish after decree. There are, however, two principles concerning which the courts seem in agreement: First, that the plaintiff may always, as a matter of right, bring a new action upon the new infringement; second, that use of any of the other remedies is subject to the judicial discretion of the court. Both of the alternative remedies here sought are such as fall within the second class.

The "discretion" here intended is a judicial discretion governed by the situation and circumstances affecting the exercise thereof. Even where an appellate court has power to review the exercise of such discretion, the inquiry is confined to whether such situation and circumstances clearly show an abuse of discretion, that is, arbitrary action not justifiable in view of such situation and circumstances.

We now consider the situation and circumstances bearing upon the exercise of discretion of the trial court in denying a supplemental injunction. Naturally, every investigation of this sort is governed by the situation and circumstances of the particular case. However, it sometimes happens that the same or closely similar situations and circumstances have reoccurred in enough cases to result in a measure or rule of decision. An instance of this kind exists in situations of proceeding against a new device where an infringement injunction is in force. That rule is that where the difference between the new and the accused device appears to be substantial or doubtful — not merely colorable — the plaintiff will be denied relief by attachment for contempt and relegated to other remedies. This rule is here applicable because a petition for supplemental injunction, while not the same, is little more than a milder proceeding intended to reach a situation where contempt might be proper, that is, of purely colorable differences. John W. Gottschalk Mfg. Co. v. Springfield Wire & Tinsel Co., 1 Cir., 90 F.2d 468, 472; Singer Mfg. Co. v. Seinfeld, 2 Cir., 89 F. 2d 35, 37; Better Packages v. L. Link & Co., 2 Cir., 68 F.2d 904, 905; Wachs v. Balsam, 2 Cir., 38 F.2d 50, 52; Armstrong v. De Forest Radio T. & T. Co., 2 Cir., 10 F.2d 727, 728, 729, certiorari denied 270 U. S. 663, 46 S.Ct. 471, 70 L.Ed. 787; Charles Green Co. v. Henry P. Adams Co., 2 Cir., 247 F. 485, 486; National Metal Molding Co. v. Tubular Woven Fabric Co., 1 Cir., 239 F. 907, 908; Crown Cork & Seal Co. v. American Cork Specialty Co., 2 Cir., 211 F. 650, 653. Both in a petition for a supplemental injunction and in an attachment for contempt, the relief depends upon a construction of the existing injunction order (as to contempt, Flat Slab Patents Co. v. Turner, 8 Cir., 285 F. 257, 272, certiorari denied 262 U.S. 752, 43 S.Ct. 700, 67 L.Ed. 1215, and as to supplemental injunction, Armstrong v. De Forest Radio T. & T. Co., 2 Cir., 10 F.2d 727, 728, certiorari denied 270 U.S. 663, 46 S.Ct. 471, 70 L.Ed. 787). The inquiry in each is whether the new thing is within the injunction. The difference between the two proceedings lies in the relief. In petition for supplemental injunction, the relief is an adjudication that the new thing is within the injunction (resulting in a liability to contempt for future violations) and, possibly, inclusion in the accounting. In contempt proceeding, the relief is punishment for past violation of the original injunction with attendant damages. This difference in relief should not affect the application of the above rule.

With this rule in mind, we consider the situation and circumstances here to ascertain whether the new devices — designated as M-1 and M-2 — are more than colorably different from the accused device found to be an infringement. This comparison must, of course, be made in the light of the patent involved as construed by this court. Since the comparison is so to be made, it is necessary to examine the patent and the construction thereof by this court. Such examination is contemplated for the sole purpose of furnishing the background for a comparison of the new devices (M-1 and M-2) with the accused device in order to determine whether the differences are only colorable or are substantial enough to arouse doubt of similarity.

The patents involved in this infringement suit were Steimer, No. 1,564,909, and Peiler, No. 1,573,742. Both patents were in the art of mechanical devices to feed molten glass from furnaces into parison molds to form articles, such as bottles or jars. In another case (Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 71 F.2d 539, 544-548, certiorari denied 293 U.S. 625, 55 S.Ct. 345, 79 L.Ed. 712), which involved the same devices sought to be brought in by this application for supplemental injunction but different patents from those here, though in the same art, this court endeavored to define that "art" and to set forth, generally, some of the stages of its development, including some of the types of apparatus.² The Steimer patent is for an apparatus of the mechanical plunger type. The Peiler patent was designed to combine in one patent the generic principles of four earlier separate applications. It contained both method and apparatus claims — the latter being expressly related to the specifications as to forms of apparatus of the "paddle — mechanical plunger" (or needle) type and of the mechanical "plunger" (needle) type. The other types, "shown * * * for the purpose of illustrating the generic character of certain claims made herein" (patent p. 11, 1.1.107-110) were of the "paddle" type and the "punty" type. All of the above types involved purely mechanical means to affect gravity flow in the determination of the weight (amount of glass) and the form of the gob fed into the mold.

On appeal from the interlocutory decree in this case (Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 39 F.2d 769), this court determined that the ten method claims involved were invalid as covering...