National Brake & Electric Co. v. Christensen

• Decision Date: 04 October 1921
• Docket Number: 2163.
• Citation: 278 F. 490
• Parties: NATIONAL BRAKE & ELECTRIC CO. v. CHRISTENSEN et al.
• Court: U.S. Court of Appeals — Seventh Circuit

278 F. 490

NATIONAL BRAKE & ELECTRIC CO. v. CHRISTENSEN et al.

No. 2163.

United States Court of Appeals, Seventh Circuit.

October 4, 1921

Rehearing Denied November 14, 1921. [Copyrighted Material Omitted]

John S Miller, of Chicago, Ill., for petitioner.

William R. Rummler, of Chicago, Ill., and Louis Quarles, of Milwaukee, Wis., for respondents.

Before BAKER, EVANS, and PAGE, Circuit Judges.

BAKER Circuit Judge.

A preliminary view of the instant controversy may be had by referring to the opinion of Judge Geiger, August, 1914, in which he directed the entry of (1) an injunctional decree on the merits of Christensen's patent monopoly of a combined pump and motor, and (2) an order for an accounting; the opinion of this court, October, 1915 (229 F. 564, 144 C.C.A 24), affirming the rulings of Judge Geiger; the order of the Supreme Court, February, 1916 (241 U.S. 659, 36 Sup.Ct. 447, 60 L.Ed. 1225), denying petitioner's application for a writ of certiorari; the opinion of the Court of Appeals for the Third Circuit, July, 1917 (243 F. 901, 156 C.C.A. 413), holding that Christensen's patent 635,280 was a nullity, in obedience to which the District Court for the Western District of Pennsylvania, on October 1, 1917, dismissed respondents' bill against the Westinghouse Traction Brake Company as to patent 635,280; the opinion of the Court of Appeals for the Third Circuit, June, 1918 (252 F. 392, 164 C.C.A. 316), refusing to hold that the merits of respondents' bill as to patent 621,324 had ever been adjudicated in that circuit; the opinion of Judge Geiger, July, 1918, unreported, denying petitioner's motion to interpose as a defense to the entire bill, which was founded on patents 621,324 and 635,280, the decree in the Third Circuit holding that patent 635,280 was a nullity; the opinion of this court, April, 1919 (258 F. 880, 169 C.C.A. 600), denying petitioner's application for an order to direct the District Court to receive petitioner's proposed answer of res adjudicata and thereupon to dismiss respondents' bill; and the opinion of the Supreme Court, December, 1920 (254 U.S. 425, 41 Sup.Ct. 154, 65 L.Ed. 341), reversing this court's order of general dismissal of the petition and directing a determination of the merits of the petition 'as an application for leave to file in the District Court a petition in the nature of a bill of review.'

Since the remand the petitioner has brought no additional facts into the record, and in its additional brief it has advanced but two new contentions: (1) That the Supreme Court has decided that the Wisconsin District Court's decree is only interlocutory in its essence, and that petitioner is therefore entitled as a matter of right to interpose its answer of res adjudicata; and (2) that respondents, by conducting the Pennsylvania litigation against the Westinghouse Traction Brake Company, without bringing into that record their Wisconsin decree against petitioner as an adjudication against the Westinghouse Traction Brake Company, have released and canceled their Wisconsin decree against petitioner, even assuming that it was final in its essence.

As to the first of the new contentions we are of the opinion that, if the Supreme Court had intended to sustain petitioner's demand to file an answer of res adjudicata as a matter of right because nothing had yet been adjudicated in this circuit, language would have been used which would express that intent. Our view is based, not merely on the silence of the Supreme Court in that respect, but as well on attributing the usual legal meaning to the words actually employed. Without going into the history of reviews, or the distinction between filing a bill of review to open a decree which has been 'signed and enrolled,' and filing a bill or petition in the nature of a bill of review to open a decree which has not been signed and enrolled, but which at the direction of the court has been recorded by the clerk in the order book, it is enough to say that a bill of review and a petition in the nature of a bill of review are alike in this: That neither is addressable to a decree that is not final in its essence. At the former hearing of this petition our mistake consisted, not in denying petitioner's prayer for the specific relief based on the contention that nothing had been adjudicated in this circuit, but in our failure to give proper significance to the added prayer 'for general relief,' and therefrom to perceive an invocation to examine the record to determine whether facts exist which would appeal to the equitable discretion of a chancellor and afford a proper basis for opening in the interests of justice and equity a decree which otherwise would remain final.

Our answer to the second of the new contentions will appear in the course of our disposition of the case on the entire record.

I. Bills of review are allowed for the purpose either of correcting errors of law apparent on the face of the record or of admitting new evidence which has come into being since the decree or was not known or knowable at the time of the trial. Not only will the appeal to equitable discretion fail if the new evidence or the errors of law are not presented at the earliest practicable moment, but also if the errors of law or the new evidence would not change the substantial equities between the parties. In this entire record from beginning to end we find nothing to change the substantial justice based on the following established facts: Christensen made a valuable invention. He fully and accurately complied with all the conditions necessary to obtain from the government a franchise to exclude others from practicing his invention. In consideration of his disclosure the government executed and delivered to him its franchise-contract. Petitioner's predecessor, the general manager in charge of operations being continuously the same, used Christensen's invention under license. After that license was abrogated and a new license was given to respondent Allis-Chalmers Company, petitioner continued to use the invention. Neither notice nor bill for injunction sufficed to stop infringement, which began before the filing of the original bill in 1906 and continued until the expiration of the patent in March, 1916, with the litigation still unended. In stating the facts controlling the merits we have omitted a clerical mistake of the Patent Office and also an oversight on the part of respondents' counsel or the clerk of the District Court, which was not corrected by the judge of the District Court or the judges of this court, in failing to have the wording of the decree conform strictly to the facts as found by both courts respecting the merits. Both of these matters will be set forth fully hereinafter; but at this point we desire to emphasize that, even assuming for the moment that these technicalities are of legal soundness, the decree which establishes true justice between the parties should not be opened up to let in mere legal technicalities which, on the opening up, would be reformed to accord with the unimpeachable equities apparent in the record.

II. No error of law is apparent on the face of the Wisconsin record. On the finding of facts respecting novelty, utility, the exercise of the inventive faculty, nonanticipation, absence of aggregation, presence of a true combination, the applicant's full compliance with all requirements, the government's issuance to him of a franchise to exclude unlicensed persons, of which he continued to be the equitable and legal owner, and defendant's unlicensed use of the invention, the only equitable and legal conclusion was that an injunction should issue and an accounting follow.

III. Under the head of newly discovered evidence petitioner offers the 1917 Pennsylvania decree in the suit of respondents against the Westinghouse Traction Brake Company, holding that patent 635,280 was a nullity. Between that decree and the 1914 Wisconsin decree in this suit of respondents against petitioner, in which the injunction was based in words upon patent 635,280, apparently there is opposition. In subsequent paragraphs of this opinion we will point out that, when these decrees are read in the light of the issues, the evidence, the findings of fact and the conclusions of law in the respective cases, the seeming repugnancy utterly disappears. But for the purpose of this paragraph we assume that there is an irreconcilable conflict. What pertinency to the 1914 Wisconsin decree has the fact that the Pennsylvania courts in 1917 entered a repugnant decree between different parties? None, of course, in and of itself. But petitioner seeks to make that otherwise irrelevant fact material by contending that the record shows that the Wisconsin defendant and the Pennsylvania defendant were Siamese twins, that one and the same stream of blood (capital and management) sustained both, that a blow upon one was ineluctably felt by the other, and that neither could defend itself without defending the twain. Was this, the only material new fact offered, one that came into being since the decree, or, if older, was unknown to petitioner prior to the decisions in this circuit? From the record the facts are that petitioner knew of the twinship ever since 1906 and that respondents fought the case through and obtained their decrees in this circuit in the belief that petitioner was a separate and independent infringer. If petitioner had desired in 1914, as it now desires, to have one decree be a bar for both infringers, it could then have brought the matter into this case.

IV. Inasmuch as there is neither newly discovered evidence nor error of law in the decision on the merits, and especially as this appeal to equitable discretion is antagonistic to any desire to see substantial...