John Simmons Co v. Grier Bros Co

Decision Date27 February 1922
Docket NumberNo. 57,57
PartiesJOHN SIMMONS CO. v. GRIER BROS. CO. *
CourtU.S. Supreme Court

Mr. James Q. Rice, of New York City, for petitioner.

Messrs. C. P. Byrnes, David A. Reed, George H. Parmelee, and George E. Stebbins, all of Pittsburgh, Pa., for respondent.

Mr. Justice PITNEY delivered the opinion of the Court.

In October, 1913, Frederic E. Baldwin, a citizen of New York, together with the present petitioner John Simmons Company, a corporation and citizen of that state, brought suit in the United States District Court for the Western District of Pennsylvania against the Grier Bros. Company, a corporation and citizen of the latter state, charging infringement of reissued letters patent No. 13,542, issued to and owned by Baldwin, and under which the Simmons Company was sole licensee, for certain improvements in acetylene gas lamps intended for various uses, especially that of miners' lanterns. The bill charged also unfair competition with plaintiffs by the sale of lamps made to resemble the Baldwin lamp manufactured under the patent. The District Court granted a preliminary injunction as to unfair competition, but reserved the question of patent infringement for final hearing. 210 Fed. 560. Upon that hearing the court held claim 4 of the Baldwin reissue patent valid and infringed, and awarded a permanent injunction upon both grounds, July 24, 1914, with an interlocutory decree for an accounting. 215 Fed. 735. Upon appeal by defendant (the present respondent), the Circuit Court of Appeals for the Third Circuit affirmed the decree as to unfair competition, but reversed it as to patent infringement, holding the reissue to be void as to claim 4 upon the ground that this broadened the original patent. Grier Bros. Co. v. Baldwin, 219 Fed. 735, 739, 135 C. C. A. 433. This decision was rendered January 22, 1915, and the mandate went down about a month later setting forth the decree of the appellate court that the decree of the District Court be 'affirmed as to so much thereof as refers to the subject of unfair competition, but the rest of the decree must be modified in accordance with the opinion of this court,' and that the appellant recover costs and have execution therefor, and thereupon commanding that execution and further proceedings be had according to right and justice. No decree was entered upon this in the District Court until January 5, 1916, when, on motion of plaintiffs, an order was entered that the decree of the Circuit Court of Appeals be made the decree of the District Court, that plaintiffs recover from defendant their damages sustained by reason of unfair trade to be ascertained and reported by a master to whom reference was made for the purpose, that a perpetual injunction be issued restraining defendant from further unfair competition in trade, and that the bill of complaint as to infringement of the reissue patent be dismissed. The accounting before the master is still pending.

In May, 1913, Baldwin had brought suit (John Simmons Company intervening) upon the same reissue patent in the United States District Court for the Southern District of New York against Abercrombie & Fitch Company (Justrite Company intervening), and that court adjudged the patent valid and infringed. 227 Fed. 455. On appeal this decree was affirmed by the Circuit Court of Appeals for the Second Circuit, November 9, 1915. 228 Fed. 895, 143 C. C. A. 293. On December 20, 1915, defendants in that suit presented to this court a petition for a writ of certiorari; January 10, 1916, this writ was granted (Abercrombie & Fitch Co. v. Baldwin, 239 U. S. 649, 36 Sup. Ct. 284, 60 L. Ed. 485), and under it, on December 10, 1917, the decision of the Circuit Court of Appeals for the Second Circuit was affirmed, this court holding, in direct opposition to the decision of the Circuit Court of Appeals for the Third Circuit, that claim 4 of the reissue was valid (245 U. S. 198, 38 Sup. Ct. 104, 62 L. Ed. 240). A mandate was sent down January 15, 1918, to the District Court for the Southern District of New York, and the proper decree was promptly entered thereon.

Soon after this plaintiffs herein petitioned the District Court for the Western District of Pennsylvania for leave to file what was called a 'bill of review' against its decree of January 5, 1916. The court in the first instance refused, but without prejudice to an application to the Circuit Court of Appeals for the Third Circuit for leave to file such bill. Upon application that court granted plaintiffs leave to make the application to the District Court, and authorized the latter court to take action thereon. Under this leave, application was renewed to the District Court, the proposed 'bill of review' being at the same time presented, and with leave of the court filed. This bill sets out the original bill and the proceedings had thereunder, as above recited, also the proceedings in the suit in the Second Circuit and the final decision of the court therein, alleging these as 'new facts' that had arisen since the decree entered in the District Court for the Western District of Pennsylvania on the 5th of January, 1916, and as showing that that decree was erroneous and contrary to law, in so far as (pursuant to the opinion of the Circuit Court of Appeals for the Third Circuit) it dismissed the bill as to infringement of the reissue patent and failed to decree a perpetual injunction and ascertainment of damages as to infringement; prayed that the cause might be reopened and the decree rescinded and set aside, in so far as it dismissed the patent cause of action, and a new decree entered granting the relief prayed for in the original bill. Defendant answered, admitting in the main, or at least not denying, the allegations of the so-called bill of review as to the former proceedings and decrees in the courts of the two circuits, but denying that the lamp involved in the Abercrombie & Fitch Company suit (the 'Justrite lamp') corresponded in essential features of construction with the 'Grier lamp' involved in the present suit; averring that the decisions of the Circuit Courts of Appeals of the two circuits were not rendered on the same state of facts; that the bill was 'in fact only a petition for rehearing because of the decision of the Supreme Court referred to therein'; and that the decision of this court in the Abercrombie & Fitch Company suit formed no basis for a bill of review.

Afterwards John Simmons Company by leave filed a supplemental bill setting up that it had acquired from Baldwin all his rights in the reissue patent, including all claims for damages and profits on account of the infringement. Defendant having answered this, testimony was taken to show the structural identity of the 'Justrite' and the 'Grier' lamps, and the cause came to hearing, with the result that the District Court found substantial identity between the two lamps in all essential features of construction, sustained the right of plaintiffs to maintain the bill of review, and held that its former decree, entered pursuant to the mandate of the Circuit Court of Appeals, so far as it held the reissue patent invalid, should be vacated and set aside, and a decree entered sustaining the validity of claim 4 of the reissue, finding defendant guilty of infringement thereof, and plaintiffs entitled to an accounting of profits and a perpetual injunction. From the decree thus entered an appeal was taken to the Circuit Court of Appeals, which reversed it and remanded the cause, with directions to reinstate the decree of January 5, 1916. Grier Bros. Co. v. Baldwin, 265 Fed. 481. To review this decision the present writ of certiorari was allowed. John Simmons Co. v. Grier Bros. Co., 253 U. S. 482, 40 Sup. Ct. 587, 64 L. Ed. 1024.

The District Court, as will appear from an excerpt from its opinion reported in § note to the opinion of the Circuit Court of Appeals (265 Fed. 483), treated the case as one based upon a true bill of review, and this as resting not upon new matter that had arisen since the decree, but upon error of law apparent on the face of the record without further examination of matters of fact.

The Circuit Court of Appeals, upon a recital of the different steps in the litigation, regarded the situation as one of plaintiffs' own creation, for the reason that, after that court's decision on the original bill, but before the mandate went down, although apprised of the contrary decision of the District Court of the Southern District of New York in a cause to which they were parties, plaintiffs made no request to the Circuit Court of Appeals for the Third Circuit to withhold its mandate; that, after the mandate went down, and before a decree pursuant to it was entered in the court below, they knew of the affirmance of the decision of the District Court of New York by the Circuit Court of Appeals for the Second Circuit, yet made no request to either court in the Third Circuit to have the entry of a decree withheld; that, on the contrary, with knowledge that this court had under consideration a petition for certiorari in the Second Circuit case, they prepared and of their own...

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