Moore v. CR Anthony Co., 4410.

• Decision Date: 07 August 1952
• Docket Number: No. 4410.,4410.
• Citation: 198 F.2d 607
• Parties: MOORE et al. v. C. R. ANTHONY CO.
• Court: U.S. Court of Appeals — Tenth Circuit

198 F.2d 607 (1952)

MOORE et al. v. C. R. ANTHONY CO.

No. 4410.

United States Court of Appeals Tenth Circuit.

August 7, 1952.

Paul Dudley, Oklahoma City, Okl. (J. B. Dudley, Oklahoma City, Okl., and Charles E. Bledsoe, Lawton, Okl., on the brief), for appellant.

Joseph J. Gravely, St. Louis, Mo., and Carlisle Blalock, Dallas, Tex. (Joe A. McCloud, Oklahoma City, Okl., on the brief), for appellee.

Before BRATTON, HUXMAN and MURRAH, Circuit Judges.

MURRAH, Circuit Judge.

In this suit for infringement of a design patent on a Western style hat, the trial court first held the patent valid and infringed, but subsequently granted the defendant's motion for new trial and afforded the parties an opportunity to introduce additional evidence. After the court indicated its intention to hold the patent invalid, the plaintiff, appellant here, moved for dismissal without prejudice under Rule 41(a) (2) F.R.C.P. 28 U.S.C.A. and requested the court to fix the terms and conditions of the dismissal. The court overruled the motion and reentered its first findings of fact, but finally concluded that the patent was void "for want of patentable invention."

On appeal from a judgment on those findings and conclusions, appellant's first assignment of error is the refusal of the court to allow it to dismiss its cause without prejudice. The contention is to the effect that Rule 41(a) (2) authorizes the dismissal of a complaint as of right, subject only to the equitable power of the court to impose "such terms and conditions as the court deems proper"; and that the refusal of the court to fix terms and conditions for dismissal was without authority under the Rule.

While the rule has been construed as contended, see Bolten v. General Motors Corp., 7 Cir., 180 F.2d 379, 381, we think the majority and better reasoned view is to the effect that the power of the court to order a dismissal of a case without prejudice "`upon such terms and conditions as the court deems proper'" is a matter of judicial discretion, the exercise of which will not be disturbed on appeal in the absence of clear abuse. Walker v. Spencer, 10 Cir., 123 F.2d 347; Butler v. Denton, 10 Cir., 150 F.2d 687; Ockert v. Union Barge Line Corp., 3 Cir., 190 F.2d 303; Cone v. West Virginia Pulp & Paper Co., 330 U.S. 212, 217, 67 S.Ct. 752, 91 L.Ed. 849. The motion to dismiss came after the case had been tried and submitted, and the court had finally indicated its judgment. The avowed purpose of the Rule was to prevent the dismissal of cases without prejudice after trial and in the face of an impending unfavorable judgment. See 5 Moore's Federal Practice 1018. In the circumstances, we do not think the trial court abused its discretion in overruling the motion to dismiss.

According to the claims and specifications, the characteristic feature of the design for the hat "resides in the configuration of the crown, which presents a relatively wide, longitudinally extending, central indentation bounded on its sides by substantially straight parallel ridges with elongated side indentations extending from end to end of the crown, the longitudinal extremities of said central indentation being bounded by transverse ridges and having transverse indentations in the adjacent front and rear portions of the crown, all as shown." Otherwise stated, the characteristic and patentable features of the hat were the special size, shape, location and arrangement of the various creases in the crown of the hat. The creases or indentations are shaped by use of a molding plug under hydraulic pressure in order to give the hat a permanently precise, formal and dressy appearance.

The trial court found from the evidence that for many years, hats had been shaped and creased with top, side, front and rear creases by hand and sometimes with the assistance of steam. But the court pointed out that prior attempts at hand creasing did not produce anything which resembled the plaintiff's hat. "These prior hats" said the court, "presented a slouchy and casual appearance, wherein the material is broken down at the points or lines of creasing." And, the court went on to say that the appellant's hat "has on the contrary, a formal dressy look that gives an entirely different impression than the one creased by hand or in a homemade manner."

Accepting these findings, the appellant contends that they established invention and that the court erred as a matter of law in resting its decree of invalidity on them. The appellee is unwilling to accept this factual premise as the sole basis for the court's decree, and, invoking the well known and salutary rule which permits it to urge in support of the decree any matter appearing in the record¹, points to the prior art of record as clearly anticipating the patented design.

There was abundant evidence to the effect that long before the application for the patent in suit, the wearers of Western style hats dished out the top of the crown and indented the front, rear and sides to form creases similar to the patented design, and that characteristic creases were formed either by hand or by the use of steam or luke warm water. As compared with the...