Moist Cold Refrigerator Co. v. Lou Johnson Co.

• Decision Date: 30 November 1957
• Docket Number: No. 15057.,15057.
• Citation: 249 F.2d 246
• Parties: MOIST COLD REFRIGERATOR CO., Inc., a Corporation, Appellant, v. LOU JOHNSON CO., Inc., a Corporation; Meier & Frank Company, Inc., a Corporation; Admiral Corporation, a Corporation; and Amana Refrigeration, Inc., a Corporation, Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

249 F.2d 246 (1957)

MOIST COLD REFRIGERATOR CO., Inc., a Corporation, Appellant, v. LOU JOHNSON CO., Inc., a Corporation; Meier & Frank Company, Inc., a Corporation; Admiral Corporation, a Corporation; and Amana Refrigeration, Inc., a Corporation, Appellees.

No. 15057.

United States Court of Appeals Ninth Circuit.

October 17, 1957.

Rehearing Denied November 30, 1957.

Buckhorn, Cheatham & Blore, Orme E. Cheatham, Hugh L. Biggs, Portland, Or., Davis, Hoxie & Faithfull, John B. Cunningham, T. Roland Berner, Aaron Lewittes, New York City, for appellant.

Ramsey & Kilisch, W. E. Ramsey, J. Pierre Kolisch, Portland, Or., Wilkinson, Huxley, Byron & Hume, Charles L. Byron, William E. Lucas, Francis H. Uriell, Chicago, Ill., for appellee.

Before STEPHENS, Chief Judge, BARNES, Circuit Judge, and LINDBERG, District Judge.

BARNES, Circuit Judge.

This is an action for damages for patent infringement of Reissue Patent No. 23,058.¹ It was tried in the District Court with a jury. Prior to the trial, Lou Johnson Co. and Meier & Frank Co., both corporations, were eliminated as defendants.

The remaining defendants moved for a directed verdict at the conclusion of the plaintiff's case² upon the grounds of (1) the invalidity of the patent because of (a) anticipation by the Anderson patent, (b) anticipation by the Anderson patent plus the Larkin patent, (c) aggregation without new results, (d) invalid specifications, (e) indistinct claims, (f) prior use; and (2) a lack of infringement, citing six alleged distinctions. Defendants' motion was denied because the court assumed "that a similar motion will be made at the conclusion of all testimony." This same motion was renewed at the conclusion of testimony, with an additional ground of vagueness and indefiniteness. This motion was taken under advisement.³

The jury returned a verdict against the defendant Admiral Corporation in the sum of $2,093,180.00, and against the defendant Amana Refrigeration, Inc., in the sum of $45,575.00. The jury also answered special interrogatories favorable to plaintiff, finding (a) invention, (b) lack of ambiguity or vagueness in each of four claims, (c) infringement.

Defendants moved that judgment be entered in their favor, notwithstanding the jury verdicts.

This motion was granted by the trial court. His remarks at that time are revealing,⁴ and should be read in full for a complete understanding of the matter, as it presently stands before us.

At the time that the special verdicts were formally set aside and the defendants granted judgment in their favor, the District Court also declared:

"The Court on its own initiative, and pursuant to Rule 59(d) of the Federal Rules of Civil Procedure, Orders that in the event that the judgment of this Court in favor of the defendants be reversed on appeal, then the verdict of the jury in favor of the plaintiff and against the defendants and the special interrogatories, returned December 2, 1955, shall be set aside, and a new trial granted on the following grounds:

"(1) The verdict is contrary to the clear weight of the evidence.

"(2) The damages awarded plaintiff are excessive. Each party shall bear its own costs."⁵

The patent in suit⁶ was described by the able trial judge as a household refrigerator having a separate freezing compartment and a separate cooling compartment operated by a single liquefying unit with the cooling compartment having a humid temperature, or "moist cold," and non-frosting coil.

A — History of Prior Litigation

This appeal is not the first in this case. The District Court originally rendered a summary judgment in favor of defendants. The plaintiff appealed, and this Court reversed and remanded, Moist Cold Refrigerator Co., Inc., v. Lou Johnson Co., 9 Cir., 217 F.2d 39, 40. The decision of this Court in the prior appeal discusses the history of litigation surrounding the original patent, No. 2,056,165, issued October 6, 1936. That patent,

"* * * claimed a combination of known refrigeration elements and principles to create separate refrigeration compartments for foods desired merely to be cooled and those desired to be frozen, and to eliminate the necessity of defrosting. The sole claim was the combination."

Judge Healy spoke for this Court in detailing how the assignee of the original patent brought suit for infringement in the Northern District of Illinois against Stewart-Warner Corporation, and won a verdict for damages from the jury; how the case was appealed; and how the Court of Appeals reversed:⁷

"* * * on the ground that the claims of the patent were stated in terms of results and failed adequately to describe the means by which the results would be obtained, in violation of 35 U.S.C.A. § 33 * * *."

The Seventh Circuit was guided and largely influenced by the Supreme Court's decision in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3.

Following this reversal, an application for reissue of the original patent was filed June 18, 1948, on the ground the original patent had been held invalid as functional. The reissue patent was granted on December 14, 1948. Defendants' Exhibit 102

The present action was begun April 23, 1951. After both parties moved for a summary judgment, defendants' motion was granted

"* * * on the ground that reissue patent No. 23,058 was void, because no error through inadvertence, accident or mistake, as required by the reissue statute, (35 U.S.C.A. § 64) was or could be shown under the facts * * * The theory of the district court was that as a matter of law failure to anticipate a court decision does not constitute inadvertence, accident or mistake within the intendment of the statute."

But this Court held on appeal that there had been no deliberate or skillful drafting of the patent to cover any means that anyone might discover to produce the same result, no fraudulent or deceptive act, no deliberate cancellation during course of negotiations, no intentional omissions, and that the failure of the patentee to foresee the Supreme Court decision in Halliburton Oil was an error occurring through inadvertence or mistake within the sense of the reissue statute. Plaintiff in this case therefore was not barred from proceeding to trial in the lower court.⁸

We now turn to the responsibilities and duties of this Court under the circumstances here existing.

B — The Law

The District Court granted an alternative new trial. In the leading case of Montgomery Ward & Co. v. Duncan, 311 U.S. 243, at page 254, 61 S.Ct. 189, at page 196, 85 L.Ed. 147, the Supreme Court said:

"Should the trial judge enter judgment n. o. v. and, in the alternative, grant a new trial on any of the grounds assigned therefor, his disposition of the motion for a new trial would not ordinarily be reviewable, and only his action in entering judgment would be ground of appeal. If the judgment were reversed, the case, on remand, would be governed by the trial judge\'s award of a new trial."

In Snead v. New York Central, 4 Cir., 216 F.2d 169, 172, the court said:

"`Where there is substantial evidence in support of plaintiff\'s case, the judge may not direct a verdict against him, even though he may not believe his evidence or may think that the weight of the evidence is on the other side; for, under the constitutional guaranty of trial by jury, it is for the jury to weigh the evidence and pass upon its credibility. He may, however, set aside a verdict supported by substantial evidence where in his opinion it is contrary to the clear weight of the evidence, or is based upon evidence which is false; for, even though the evidence be sufficient to preclude the direction of a verdict, it is still his duty to exercise his power over the proceedings before him to prevent a miscarriage of justice. See Felton v. Spiro, 6 Cir., 78 F. 576. Verdict can be directed only where there is no substantial evidence to support recovery by the party against whom it is directed or where the evidence is all against him or so overwhelmingly so as to leave no room to doubt what the fact is. Gunning v. Cooley, 281 U.S. 90, 50 S.Ct. 231, 74 L.Ed. 720. Verdict may be set aside and new trial granted, when the verdict is contrary to the clear weight of the evidence, or whenever in the exercise of a sound discretion the trial judge thinks this action necessary to prevent a miscarriage of justice.\' Inside quote from Garrison v. U. S., 4 Cir., 62 F.2d 41, 42

"* * * If the judge is of opinion that the verdict of the jury was against the weight of the evidence or based on evidence that was false, he should set it aside and grant a new trial, even though direction of a verdict or judgment n. o. v. was not warranted."

Disposition of this appeal can take any of three alternative courses. We can either (1) affirm the trial court's action in granting judgment for the defendants n. o. v., (2) remand the case for a new trial, in accordance with the alternative order of the District Court, or (3) hold that the alternative order granting the new trial was an abuse of discretion and reinstate the jury verdicts.

In reviewing the validity of the judgment n. o. v. granted by the District Judge, the same Montgomery Ward case, cited above, has this to say:

"The motion for judgment cannot be granted unless, as a matter of law, the opponent of the Movant (here appellant) failed to make a case, and, therefore a verdict in Movant\'s favor should have been directed." Montgomery Ward & Co. v. Duncan, supra, 311 U.S. at page 251, 61 S.Ct. at page 194.

Another Circuit Court has said:

"The rule is well established that a motion for a judgment notwithstanding the verdict presents only a question of law as to whether, when all the evidence is considered together with all reasonable inferences most favorable to plaintiff, there is a total failure or lack of evidence to prove any necessary element of plaintiff\'s case." O\'Day v. Chicago River & Indiana Ry. Co., 7 Cir., 216 F.2d 79, 82.

See also: Snead v....