Luminous Unit Co. v. Freeman-Sweet Co.

• Decision Date: 11 December 1924
• Docket Number: No. 3232.,3232.
• Citation: 3 F.2d 577
• Parties: LUMINOUS UNIT CO. v. FREEMAN-SWEET CO.
• Court: U.S. Court of Appeals — Seventh Circuit

3 F.2d 577 (1924)

LUMINOUS UNIT CO. v. FREEMAN-SWEET CO.

No. 3232.

Circuit Court of Appeals, Seventh Circuit.

December 11, 1924.

Harry Lea Dodson, of Chicago, Ill., for appellant.

Paul Bakewell, of St. Louis, Mo., and Charles A. Brown, of Chicago, Ill., for appellee.

Before ALSCHULER and EVANS, Circuit Judges, and LINDLEY, District Judge.

EVAN A. EVANS, Circuit Judge.

This suit was to enjoin the further infringement of certain claims of patent No. 1,076,418, and to recover damages for past infringement. Plaintiff prevailed, and the decree in its favor, finding claim 1 valid and infringed, and directing an accounting, was affirmed by this court on appeal. 264 F. 107. Thereafter the mandate of this court was duly issued, and in conformity therewith a decree was entered in the District Court. Thereafter a motion was made to vacate such decree and to enter one dismissing the complaint, which motion was granted. This decree, the one here involved, is herewith set forth.¹

It is insisted that the court erred in vacating the decree entered pursuant to the mandate of this court, and in entering one at variance with the previous ruling of this court; reliance being had for this position on the law of the case. The "law of the case" is too well understood to require exposition or elucidation. It has been invoked and applied times without number.² The latest case from this court, recognizing and applying the law of the case, is Lackner v. Starr, 2 F.(2d) 516, decided at the last session.

The rule is expressed in Re Sanford Fork & Tool Co., 160 U. S. 247, 16 S. Ct. 291, 40 L. Ed. 414, and restated in Re Potts, 166 U. S. 266, 17 S. Ct. 521, 41 L. Ed. 994, as follows: "When a case has been once decided by this court on appeal, and remanded, * * * whatever was before this court and disposed of by its decree is considered as finally settled. The Circuit Court is bound by the decree as the law of the case, and must carry it into execution, according to the mandate. That court cannot vary it, or examine it for any other purpose than execution, or give any other or further relief, or review it, even for apparent error, upon any matter decided on appeal, or intermeddle with it, further than to settle so much as has been remanded. * * * If the Circuit Court mistakes or misconstrues the decree of this court, and does not give full effect to the mandate, its action may be controlled, either upon a new appeal (if involving a sufficient amount) or by a writ of mandamus to execute the mandate of this court."

Turning to the record to ascertain what was decided on the former appeal, and what fact or facts, if any, supposedly new, were brought to the attention of the District Court which occasioned the change in the decree, we find that subsequent to the entry of the original decree in the District Court, appellant, the holder and owner of the patent herein involved, filed "a petition and application to surrender said Guth patent, No. 1,076,418, and to grant a reissue patent on said application and said surrender of said original patent," and pursuant to "said petition and application there was granted and issued a reissue patent, No. 14,680." Such fact, however, was brought to the attention of the Circuit Court of Appeals on the previous appeal, where appellee (then appellant), in addition to attacking the validity of the patent in suit and disputing its infringement, asked that the cause be dismissed because, "subsequent to the entry of the decree in the District Court, patentee had surrendered its patent and sought to secure a reissue patent."

Disposing of that issue, this court said: "Appellant's motion for a dismissal of the entire cause because, since the submission of the case on this appeal, the original patent was surrendered and a reissue patent granted, must be denied. It is unnecessary for us to consider what the effect of a surrender and a reissue, not modifying in any manner the claims in suit, but adding another claim, would be, if the suit on the original patent were undetermined, or a decree therein were interlocutory in the true sense as to the merits of the patent controversy; in the case before us, the surrender and reissue were effective only after the entry of the decree determining validity and infringement and granting a permanent injunction; and in National Brake & Electric Co. v. Christensen et al., 258 F. 880, 169 C. C. A. 600, decided April 29, 1919, we held, on full consideration, that such a decree was final in essence, even though interlocutory in time relation. The rights of the parties are determined as of the date of such a decree, a subsequent surrender of the patent does not involve an abandonment of such rights (Mevs v. Conover, 125 U. S. 144, 145, 23 L. Ed. 1008), and the recovery on the accounting will not be based upon the surrendered patent, but upon that decree which itself is based upon a patent in full force at the date of its entry."

To determine whether there should be a reversal of the order now appealed from, we are first confronted with the existence of error in our previous decision, and, if such exists, the application of the law of the case to the facts of this case. The degree of finality accorded the decree upon the former hearing, based upon the authority of the Christensen Case, 258 F. 880, 169 C. C. A. 600, is at variance with the views expressed in the subsequently decided case of Simmons Co. v. Grier Bros. Co., 258 U. S. 82, 42 S. Ct. 196, 66 L. Ed. 475. The writer of this opinion, the only judge of the present court who participated on the previous hearing, acknowledges his full share of responsibility for the conclusion there reached. We at that time relied upon the law as announced in the Christensen Case. Had the case of Simmons Co. v. Grier Bros. Co., supra, been decided, a different conclusion would have been announced.

There is no room for controversy as to the effect of the surrender of the patent sued upon and the issuance of a reissue patent. The surrender of this patent, followed by the issuance of a reissue patent, not only nullified the original patent, but took from the patentee his right to recover damages for infringements committed prior to the cancellation of the old patent. McCormick Company v. Aultman Company, 169 U. S. 606, 18 S. Ct. 443, 42 L. Ed. 875; Reedy v. Scott, 90 U. S. (23 Wall.) 352, 23 L. Ed. 109; Peck v. Collins, 103 U. S. 660, 26 L. Ed. 512; Meyer v. Pritchard, 131 U. S. CCIX, Appx., 23 L. Ed. 961; Moffit v. Garr, 66 U. S. (1 Black.) 273, 17 L. Ed. 207; Lattig & Goodrun v. Dean, 117 O. G. 1798. Are we in a position to now correct the error? In other words, should we apply the law of the case? To what extent the law of the case should govern the disposition of a pending suit in the appellate court which made the erroneous pronouncement has always been and always will be a more or less vexatious question.

The rule of the "law of the case" differs, to a certain extent, both in the reasons back of it and in its conclusiveness, from the rule of res adjudicata, and also from the doctrine of stare decisis. As to its conclusiveness, it lies somewhere between the two. It is doubtless more persuasive upon the court that pronounced it than the doctrine of stare decisis; but it is, except in the lower court, not entitled to the conclusiveness and finality that is accorded the plea of res adjudicata. It is conclusive with the lower court, and though cases may be found making it also conclusive with the appellate court pronouncing it (Standard Sewing Machine Co. v. Leslie, 118 F. 557, 55 C. C. A. 323; Roberts v. Cooper, 61 U. S. 20 How. 467, 481, 15 L. Ed. 969, and cases there cited; Thompson v. Maxwell, 168 U. S. 451, 18 S. Ct. 121, 42 L. Ed. 539; Development Co. of America v. King, 170 F. 923, 96 C. C. A. 139; U. S. v. Axman, 193 F. 644, 113 C. C. A. 512; Olsen v. North Pac. Lumber Co., 119 F. 77, 55 C. C. A. 665; Thatcher v. Gottlieb, 59 F. 872, 8 C. C. A. 334; Burow v. Grand Lodge S. of H., 134 F. 1021, 67 C. C. A. 679), the better rule appears to be that, unless the previous decision is clearly erroneous, announces a wrong rule of law, and one mischievous in its practical operation, it should be followed.

I appreciate this court has expressed itself as favoring unqualified adherence to the law as pronounced, whether erroneous or not. Standard Sewing Mach. Co. v. Leslie, 118 F. 557, 55 C. C. A. 323. Notwithstanding the holding of this case, the view that appeals to us, and which we adopt, merely recognizes the law of the case as one of public policy and private peace, and one to be followed generally, and departed from rarely. It is, however, not an inexorable rule, and should not be applied where the law as announced is clearly erroneous, and establishes a practice which is contrary to the best interests of society, and works a manifest injustice in the particular case. Messinger v. Anderson, 225 U. S. 436, 32 S. Ct. 739, 56 L. Ed. 1152; Johnson v. Cadillac Motor Car Co. (C. C. A.) 261 F. 878, 8 A. L. R. 1023; Raydure v. Lindley (C. C. A.) 268 F. 341; Chesapeake Co. v. McKell, 209 F. 514, 126 C. C. A. 336; Chase v. United States (C. C. A.) 261 F. 833; United States Annuity & L. Ins. Co. v. Peak, 129 Ark. 43, 195 S. W. 392, 1 A. L. R. 1267; Johnson v. Cadillac Motor Car Co (C. C. A.) 261 F. 878, 8 A. L. R. 1033.

The present case is, we think, clearly distinguishable from the case of Lackner v. Starr, supra. In fact, a study of the two cases may serve to emphasize the distinction which justified the application of the law of the case in Lackner v. Starr, and in rejecting it in the instant case. In the Lackner v. Starr Case we found no pronouncement of the law by the Supreme Court between the dates of the first and second decision. If error was committed in the rendition of the first opinion by this court, it was due to a misunderstanding or a misapplication of the holdings of certain Supreme Court decisions. The same decisions, and no...