In re Gamewell Fire-Alarm Tel. Co.

• Decision Date: 23 April 1896
• Docket Number: 180.
• Citation: 73 F. 908
• Parties: In re GAMEWELL FIRE-ALARM TEL. CO. et al.
• Court: U.S. Court of Appeals — First Circuit

73 F. 908

In re GAMEWELL FIRE-ALARM TEL. CO. et al.

No. 180.

United States Court of Appeals, First Circuit.

April 23, 1896

This was a suit in equity by the Municipal Signal Company against the Gamewell Fire-Alarm Telegraph Company and others for alleged infringement of letters patent Nos. 359,687 and 359,688, granted March 22, 1887, to B. J. Noyes, for improvements in municipal signal apparatus. The suit was commenced in June, 1888, and in August, 1892, after a hearing on the pleadings and proofs, an interlocutory decree for an injunction and account was entered by the circuit court. 52 F. 464. From this decree defendants appealed to this court which, on April 11, 1894, affirmed the same. 10 C.C.A. 184 61 F. 949. After the going down of the mandate, the complainant took no steps to have an accounting, and nothing has been done in that regard to the present time. On June 12 1895, defendants filed in the circuit court a petition for a rehearing, and for leave to file a supplemental bill in the nature of a bill of review, based on alleged newly-discovered evidence. On February 5,1896, this petition was denied, Colt Circuit Judge, delivering the following opinion:

'No right having been reserved in this case in the mandate of the circuit court of appeals, and no permission having been given upon application to that court for leave to file a supplemental bill in the nature of a bill of review, the defendants' petition must be dismissed. Southard v. Russell, 16 How. 547, 570; Kingsbury v. Buckner, 134 U.S. 650, 671, 10 Sup.Ct. 638; Bank v. Taylor, 4 C.C.A. 55, 53 F. 854, 866; Durant v. Essex Co., 101 U.S. 555; Watson v.Stevens, 3 C.C.A. 411, 53 F. 31, 34. The rule laid down in the above cases applies to interlocutory as well as to strictly final decrees, but does not apply to interlocutory orders for preliminary injunctions, which are now made appealable under section 7 of the act of March 3, 1891, Davis Electrical Works v. Edison Electric Light Co., 8 C.C.A. 615, 60 Fed.276, 282. Petition denied. ' Thereafter, and on April 7, 1896, the defendants, by leave, filed in this court, the complainant not objecting, an original petition, praying for an order granting leave to file in the circuit court a supplemental bill in the nature of a bill of review, setting forth the alleged newly-discovered evidence. The new evidence set forth in the petition consisted of three matters of alleged anticipation: (1) The prior use in Kansas City, Mo., of a device known as the 'Wood Signal Box'; (2) the Henry patent, No. 295,249, for a combined fire and police alarm; and (3) the Siemens-Halske publication.

The petition showed that the Wood device was set up at the hearing in the circuit court, and was considered, both by that court and by this court on appeal; and that the defense based upon it was overruled, not because it would not have been an anticipation, but because the proof of its existence and use was not sufficient. The petition then alleged that after the decision of this court defendants discovered that the Wood device had, in fact, been in actual use for business purposes in Kansas City, Mo., long prior to the application for the patent in suit; that this fact was known to complainant prior to the hearing in the circuit court; that it thereupon sent an agent to Kansas City, who discovered a person having knowledge of the use there, and one of the boxes which had been so used; that, believing this to be the only box in existence, complainant, for the purpose of concealing it, and preventing the knowledge of such use from coming to defendants, paid to such person a retainer; and that the said box was taken into the possession of the complainant, or of some person connected with it. It was further alleged that, prior to the hearing in the circuit court, defendants had obtained an intimation of the Kansas City use, and thereupon had addressed a communication to an officer of the company which had there used the system, but received evasive replies, and that it again communicated with such officer, but was unable to obtain any response. The petitioners averred that all these facts were discovered after the decision of the case on appeal, and that they were prevented from obtaining an earlier knowledge by the said machinations and concealment on the part of the complainant. In respect to the Henry patent, the petition alleged that defendants had caused a thorough and exhaustive search to be made through the letters patent granted by this and other countries and through literature generally, for the purpose of discovering patented or published anticipating structures, and that, although this search was made at great length, and at much expense, by intelligent men, the Henry patent was overlooked, and was only discovered in the course of a subsequent search. The allegations in relation to the Siemens-Halske publication, and the reasons why it was not previously discovered, were much the same as those in relation to the Henry patent.

The petition contained various allegations showing the materiality of these three matters, and also in relation to its exercise of diligence in their discovery. To this petition the complainant in the infringement suit filed an answer, which was, in effect, a general denial of the allegations. Upon the questions raised by the petition and answer briefs were filed. The points made in opposition to the petition were summarized as follows in the brief of counsel: '(1) The petition is defective in the form of its prayer. (2) The petition is filed too long after the transmission of the mandate to the circuit court to entitle it to consideration. (3) On the face of the papers the 'newly-discovered evidence' is of such a nature that the defendants are presumed to have known it. Publications cannot, in the nature of things, be newly discovered. (4) The defendants are guilty of actual laches; their 'newly-discovered evidence' has been known to them for years. (5) The substance of the alleged new matter is insufficient on its face to affect the case.'

Richard N. Dyer (Sam'l O. Edmonds was with him on brief), for petitioners.

Odin B. Roberts (James H. Lange was with him on brief), for respondent.

Before PUTNAM, Circuit Judge, and NELSON and WEBB, District Judges.

PUTNAM Circuit Judge.

The principal case to which this petition refers was a bill in equity to enjoin the infringement of certain patents. There had been in the circuit court a hearing on bill, answer, and proofs, and the usual interlocutory decree for an injunction and a master, and an appeal to this court. Thereupon this court, after argument, affirmed the decree of the circuit court, and a mandate issued in the usual form. After the receipt of the mandate by the circuit court, the respondents in the original cause, being the petitioners in the pending proceeding, filed in the circuit court a petition for leave to file a supplemental bill in the nature of a bill of review, based on alleged newly-discovered evidence. The learned judge of the circuit court passed down an opinion, which referred to many of the cases we shall cite, and properly declined to entertain the proceedings without the leave of this court. Thereupon we granted leave to file this petition in this court, and the respondent, the Municipal Signal Company, voluntarily appeared, and filed a general denial, reserving all questions of law. The petitioners support their case by affidavits, and there are no opposing proofs.

In the federal courts, the practice has been fully established as held by the circuit court, with reference to all proceedings by amendment, or supplemental in any form, which may delay or turn aside the complete execution of the judgment of the appellate court, or which may bring before that court anew substantially the questions disposed of on the first appeal. Equity rule 88 has no relation to this subject-matter, as it clearly concerns only petitions for rehearing filed prior to the taking of an appeal; and Rule 30 of the rules of the supreme court relates only to proceedings which have their beginning and end in that court. The reasons underlying the practice will be seen in the following from Sibbald v. U.S., 12 Pet. 488, 492:

'When the supreme court have executed their power in a cause before them, and their final decree or judgment requires some further act to be done, it cannot issue an execution, but shall send a special mandate to the court below to award it. Whatever was before the court, and is disposed of, is considered as finally settled. The inferior court is bound by the decree as the law of the case, and must carry it into execution, according to the mandate. They cannot vary it, or examine it for any other purpose than execution; or give any other or further relief; or review it upon any matter decided on appeal for error apparent; or intermeddle with it, further than to settle so much as has been remanded.'

The principles of this citation have been stated many times in the supreme court, but probably nowhere so pointedly as here. A late collection of the cases reaffirming them will be found in Gaines v. Rugg, 148 U.S. 228, 242, 13 Sup.Ct. 611, and the latest statement of them is in Re Sanford Fork & Tool Co., 160 U.S. 247, 255, 16 Sup.Ct. 291. So far as we can discover, the rule itself was first stated in Southard v. Russell, 16 How. 547, 570, in the following language:

'Nor will a bill of review lie in the case of newly-discovered evidence after the publication, or decree below, where a decision has taken place on an appeal, unless the right is reserved in the decree of the appellate court, or permission be given on an application to that court directly for the purpose. This appears to be the practice of the court of chancery and house of lords

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