Irvin v. Buick Motor Co.

• Decision Date: 16 March 1937
• Docket Number: No. 10755.,10755.
• Citation: 88 F.2d 947
• Parties: IRVIN v. BUICK MOTOR CO. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

88 F.2d 947 (1937)

IRVIN v. BUICK MOTOR CO. et al.^*

No. 10755.

Circuit Court of Appeals, Eighth Circuit.

March 16, 1937.

George W. Sutton, of Washington, D. C. (George O'Neal Sutton, of Washington, D. C., and C. Clyde Myers, of Kansas City, Kan., on the brief), for appellant.

Drury W. Cooper, Jr., of New York City (Arthur Miller and Roscoe C. Van Valkenburgh, both of Kansas City, Mo., and Drury W. Cooper, of New York City, on the brief), for appellees.

Before GARDNER, THOMAS, and FARIS, Circuit Judges.

FARIS, Circuit Judge.

Appellant, who was plaintiff below, is the patentee and alleged owner of patent No. 1,481,962, "for improvements in Valvein-Head Motors," in internal combustion engines, which patent was issued to him January 29, 1924.

Thereafter, about August 25, 1930, he brought the conventional action (local No. 1518 in equity) against appellees for the alleged infringement of the above patent and for an injunction, and an accounting of damages and profits. This patent suit was tried in the District Court of the United States for the Western District of Missouri, in August, 1933. On this trial appellant's counsel, as the trial court found, voluntarily limited the issues to infringement of claim 3 of the patent. The court, after a full hearing, found the issues against appellant herein and for appellees, and as a result of such finding entered a final decree, dismissing appellant's bill of complaint. The specific and only ground for such dismissal and decree was, as the trial court found, that the accused device, made and used by the appellees, did not infringe appellant's above-numbered patent; the court making no finding and entering no decree as to the validity vel non of appellant's patent.

To reverse such decree, appellant in due time and form sued out an appeal to this court, but pending a hearing on that appeal he later and in May, 1934, voluntarily came into court and dismissed it, and the mandate of this court, ordering the appeal to be dismissed, was sent down on May 2, 1934. 71 F.(2d) 1010.

Shortly thereafter, appellant filed in the same court in which the suit for infringement had been heard a bill of review (local No. 2558 in equity) in which he sought to set aside, annul, and cancel the final decree made against him in No. 1518, the original patent suit. The grounds for such cancellation and annulment as the bill set them out were newly discovered evidence, fraud of appellees in procuring the decree, and error appearing on the face of the record.

Later, this bill of review was in effect amended, and a new bill, denominated a bill in the nature of a bill of review, was filed. A motion to dismiss this amended bill in the nature of a bill of review, for lack of equity appearing on its face, was sustained by the trial court.

In May, 1935, appellant asked leave of the trial court (accompanied by a copy of a proposed amended bill of review) to plead over. In this amended bill of review, he alleged that he had been misled on the trial of the original patent suit (No. 1518) by appellees and their counsel into relying upon claim 3 of his patent, as the sole basis of the infringement, instead of relying on claims 2, 3, and 4.

The latter bill he was in effect not allowed to file; first, because the trial court ruled that it constituted a departure, and, second, because the term, at which his former bill of review had been held bad and dismissed, had lapsed.

Appellant sued out an appeal to this court both from the order holding his former bill insufficient, and the order denying him leave to file his last-mentioned amended bill. This appeal appellant voluntarily dismissed in this court, and a mandate of dismissal was sent down by this court on May 2, 1936. While the latter appeal was yet pending in this court and on July 5, 1935, appellant, without asking or obtaining leave of this court so to do, filed in the lower court the bill in the nature of a bill of review now involved in the appeal at bar.

Thereupon, appellant filed a motion for judgment on the pleadings and appellees' answer to certain interrogatories, and appellees filed their motion to dismiss appellant's third and latest bill in the nature of a bill of review, which, as said already, is now before us and presently involved. The trial court overruled appellant's motion for judgment on the pleadings and sustained appellees' motion to dismiss, and dismissed the bill and the proceeding. Thereupon appellant sued out this appeal.

The only question up for judgment herein is whether the bill in the nature of a bill of review of appellant states a cause of action, that is, whether conceding, as we must, that if every material and well-pleaded allegation of fact in it were admitted to be true, would a court in equity be warranted in setting aside and canceling the final decree entered in the original patent suit, No. 1518.

A bill of review is unlike an appeal, it does not lie as a matter of right, but the granting of it rests in the discretion of the court. Thomas v. Brockenbrough, 10 Wheat. (23 U.S.) 146, 6 L.Ed. 287. It is not designed to afford an opportunity to litigants to drag out litigation endlessly, or to furnish a field for the unnecessary expenditure of money in costs and solicitors' fees.

Ordinarily, there are but three grounds for which a bill of review is grantable. These are (a) an error in the decree, apparent on the face thereof; (b) newly discovered competent and relevant evidence, that could not with due diligence have been earlier discovered, and which when added to the evidence already adduced should probably modify the decree or produce a different result (Hill v. Phelps C.C.A. 101 F. 650; Acord v. Western Pocahontas Corp. C.C.A. 174 F. 1019); and rarely (c) for fraud in procuring the decree including fraudulently procured evidence and perjury, which were controlling in procuring the decree sought to be set aside (Armes v. Kimberly, 136 U.S. 629, 10 S.Ct. 1064, 34 L.Ed. 557). And in the latter situation it has been said that a bill in the nature of a bill of review must be resorted to. Dowagiac Mfg. Co. v. McSherry Mfg. Co. (C.C.A.) 155 F. 524. It is not all apparent errors which may be the subject-matter of a bill of review, but only such as are wrong on the pleadings, record, and decree, excluding the evidence. The decision of a court on issues of fact, in so far as they are bottomed on the evidence adduced, is conclusive on a bill of review (Whiting v. Bank of United States, 13 Pet. 6, 10 L.Ed. 33; Nickle v. Stuart, 111 U.S. 776, 4 S.Ct. 700, 28 L.Ed. 599), and so if the decree was merely erroneous, when the law is applied to the evidence, recourse must be had for correction to an appeal. If the bill in the nature of a bill of review is bottomed on newly discovered evidence, and designed to modify or reverse a decree based on the mandate of an appellate court, leave of the appellate court permitting the bill to be filed must be antecedently had. Hagerott v. Adams (C.C. A.) 61 F.(2d) 35; Southard v. Russell, 16 How. 547, 14 L.Ed. 1052; Omaha Electric Light & Power Co. v. Omaha (C.C.A.) 216 F. 848, 853. No such leave was asked or granted in the case at bar.

We have read and read again the bill before us, so as to ascertain with precision, if possible, the grounds on which appellant relies as entitling him to an annulment and cancellation of the original decree. Regrettably, the bill is filled and choked with epithets, adjectives, and expletives, largely to the exclusion of definite and clear-cut allegations. In all its verbiage we have been unable to eke out but two charges, or alleged grounds for this bill. One of these is that in the course of the trial there was a stipulation made to limit the issues on such trial to the single question whether or not appellees' accused device infringed claim 3 of appellant's patent. In order to make clear that this allegation does not constitute any certain or definite charge of fraud on appellees' part, we quote it in full from the bill:

"That the stipulation to limit the patent to claim 3 alone was a mistake, inadvertently and improvidently made in Equity Case No. 1518, and complainant believes an imposition by defendant and defendant's expert, to thereby limit and obtain a narrow interpretation and a misconstruction of patent in the case as a machine, which misconstruction was followed by the court, instead of the process and method invented by the patentee as shown and read in the light of the specifications drawings, and claims 2, 3 and 4 of letters patent."

The above language means, if it means anything, that appellant's solicitors mistakenly, inadvertently, and improvidently made a stipulation limiting the issues to claim 3. But that appellant believes it was "an imposition by defendant and defendant's expert to thereby limit and obtain a narrow interpretation and a misconstruction of patent in case as a machine." And that that misconstruction was followed by the court, who was thus led, in effect, to regard and construe appellant's patent as a machine or mechanical patent, instead of a "process and method" patent, as the...