Linde Air Products Co. v. Morse Dry Dock & Repair Co.

• Decision Date: 19 December 1917
• Docket Number: 83.
• Citation: 246 F. 834
• Parties: LINDE AIR PRODUCTS CO. v. MORSE DRY DOCK & REPAIR CO.
• Court: U.S. Court of Appeals — Second Circuit

246 F. 834

LINDE AIR PRODUCTS CO. v. MORSE DRY DOCK & REPAIR CO.

No. 83.

United States Court of Appeals, Second Circuit.

December 19, 1917

Thomas B. Kerr and Drury W. Cooper, both of New York City, for appellant.

Livingston Gifford, of New York City, for appellee.

The action is the usual bill in equity upon patent to Jottrand No. 831,078, and all the claims thereof. The application was filed August 22, 1905, and the patent issued September 18 1906. The specification purports to disclose a process or method of cutting metal articles, particularly those of a readily oxidizable metal, by means of a blowpipe of any appropriate kind directed along the line of section, there being simultaneously directed upon the same line at a certain distance from the jet of the blowpipe a jet of oxygen under pressure.

The fifth claim, in its definition of the patentee's method sets it forth more fully than any other. That claim is as follows:

The trial judge, in the opinion filed, held that the Harris use had not been affirmatively established, that plaintiff's title was good, that the defense of restraint of trade and implied license was not within the pleadings, and avoided discussion of the question of infringement of the patent properly construed by holding it invalid. Thereupon defendant submitted a final decree directing briefly that the bill be dismissed, with costs, and plaintiff a form in and by which the court would have specifically passed on each one of the issues suggested by the evidence, and particularly overruled the Harris use and adjudged the title to the patent in suit in plaintiff. The District Judge signed the form of decree propounded by defendant. Thereupon plaintiff appealed from the entire decree and under equity rule 75 (198 F. xl, 115 C.C.A. xl) served a praecipe indicating that the transcript on appeal should not contain any of the evidence relating to the Harris use or to plaintiff's title to the patent. Thereupon defendant by counter praecipe demanded that such omitted evidence be included, and the court held with defendant. Thereafter by leave of court plaintiff specifically assigned for error (1) the refusal to enter decree in the form suggested by plaintiff, and (2) compelling the incorporation in the transcript (at appellant's expense) of the testimony sought to be omitted by plaintiff, in addition to the usual assignment that the court erred in declaring the patent invalid, and dismissing the bill.

5. The method of cutting plates, pipes, and other metal articles, consisting in directing a heating jet upon the object to be cut, along the line of section, so as to raise the metal to a temperature enabling oxidation without fusion of the metal, in directing simultaneously a jet of oxygen under pressure upon the heated part of the object, and in moving simultaneously both jets along the line of section.'

The bill and answer present no singularities in form, but after the evidence was completed there clearly appeared the following defenses to the suit: (1) Invalidity for lack of patentable invention over prior patents and publications. (2) Noninfringement upon a proper construction of the patent in the light of said prior art. (3) A commercial use of substantially the same process referred to throughout the case as the 'Harris' use. (4) No title in the plaintiff to the patent. (5) Restraint of trade and implied license.

Before WARD, ROGERS and HOUGH, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

The procedural question raised herein is not without importance, if plaintiff's contentions are justified. They suggest consideration of (1) the fundamental nature of that portion of a decree not specifically covered by equity rule 71 (198 F. xxxviii, 115 C.C.A. xxxviii), i.e., the mandatory part; and (2) the effect of an appeal upon the trial record.

Undoubtedly there is a wide discretion in a chancellor as to the frame or language of his decree, but the 'forms and modes of expression, by which any tribunal pronounces its discretion to have been exercised, do not affect the nature or character of its decision; that depends on what it has decided. ' Baldwin, J., in Holmes v. Jennison, 14 Pet. 540, 10 L.Ed. 579. Yet there is a tradition, of persuasive, if not binding, force, as to such matters, and the statement in decree of any facts proved or unproved 'has altogether fallen into disuse, as unnecessary, except in matters of contempt, or in special cases, where it may be considered exceptional. ' Dan. Ch. (Ed. 1901) p. 633.

Thus rule 71 is but declaratory of good modern practice, and may be supplemented thus: The ordering, directing, or mandatory part of a decree should merely 'point out with precision what is to be done, when, where and by whom and to or for whom. ' Street, Fed. Eq. Sec. 1965, and citations. This rule naturally presumes due consideration, not only of the trial proof, but of the allegations of the bill. This bill (and all of its kind) make in legal effect one allegation, i.e., defendant has infringed, and that allegation was held not to be proved. To be sure, noninfringement may be found as the result of many things, or of one thing out of many shown and discussed; but the result is one and the same, dismissal of bill because probata do not sustain allegata. Therefore the only 'thing to be done,' the only function of the mandate of the decree, is to dismiss the bill. Thus it is plain that the contention in substance is that an equity judge is compelled to insert in his decree findings of fact, a proposition we think wholly unsustainable.

It is not uncommon for the court to distinguish between invalidity and noninfringement in dismissing a patent bill. The cases referred to and recently before us (Thacher v. Transit, etc., Co., 234 F. 640, 48 C.C.A. 406, and Oriental, etc., Co. v. De Jonge, 234 F. 895, 148 C.C.A. 493) do so, and we do not intimate, either that no lawful right exists to enter such decrees in discretion, or that circumstances may not render that or any other special form appropriate or fair. We do hold that it was not error to sign the form of decree herein.

The second part of appellant's contention assumes, if it does not assert, that, had such decree as it suggested been entered, or indeed any form assigning reasons for action (as in the cases just cited), the scope or nature of the appeal would have been changed. But the action of the court, its final order, would have been the same; i.e., dismissal. No conceivable appeal by a plaintiff dismissed is worth anything, unless it complains of that act, and assigns it for error; and citations scarcely are needed to fortify the holding that a decree must be sustained if it was right on the record, though only wrong reasons were relied on in the opinion (Gideon v. Hinds, 238 F. 140, 151 C.C.A. 216), or that an appeal in equity 'opens up the whole case,' and 'brings up the whole case' (Pittsburgh, etc., Co. v. Baltimore, etc., Co., 61 F. 708, 10 C.C.A. 20; Blythe Co. v. Hinckley, 111 F. 837, 49 C.C.A. 647). Therefore the whole record, or at least every part thereof justifying or alleged to justify the decree made-- i.e., the action directed--must come up with an appeal from the entire decree. Aliter only when but a part of the decree is appealed from. Nashua, etc., Co. v. Boston, etc., Co., 61 F. 237, 9...