Obear-Nester Glass Co. v. Hartford-Empire Co.

• Decision Date: 08 August 1932
• Docket Number: No. 8659.,8659.
• Citation: 61 F.2d 31
• Parties: OBEAR-NESTER GLASS CO. v. HARTFORD-EMPIRE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

61 F.2d 31 (1932)

OBEAR-NESTER GLASS CO. v. HARTFORD-EMPIRE CO.

No. 8659.

Circuit Court of Appeals, Eighth Circuit.

August 8, 1932.

Edmund P. Wood, of Cincinnati, Ohio (William R. Wood, of Cincinnati, Ohio, and Lawrence C. Kingsland, of St. Louis Mo., on the brief), for appellant.

A. C. Paul, of Chicago, Ill., for appellee.

Before STONE, BOOTH, and GARDNER, Circuit Judges.

GARDNER, Circuit Judge.

The Hartford-Empire Company brought suit in the United States District Court for the Eastern District of Missouri against Obear-Nester Glass Company for alleged infringement by the last-named company of two patents issued to or owned by the Hartford-Empire Glass Company, known as the Steimer patent No. 1,564,909, granted December 8, 1925, and the Peiler patent No. 1,563,742, granted February 16, 1926. That court held that claims 1 to 10, both inclusive, of the Peiler patent were invalid; that claims 17, 20, 25, and 34 were not infringed; that claims 15, 16, 18, 19, 21, 22, 23, 26, 27, 28, 29, 33, and 36 of the Peiler patent were valid and infringed by the devices made and used by the defendant; that all the claims of the Steimer patent were valid and infringed. From this decision both parties appealed to this court, but we affirmed the lower court on both appeals 39 F.(2d) 769.

After the mandate of this court had been sent down to the lower court, the Obear-Nester Glass Company presented to this court a motion for leave to present to the trial court a motion to reopen the case and to receive newly discovered evidence. The motion is not accompanied by any affidavits, but is supported by the unverified recitals contained in the motion, to which is attached certain exhibits purporting to be photostatic copies of certain drawings forming a part of the record in the United States Patent Office in connection with patent No. 1,796,929 and patent No. 1,797,206, photostatic copies of these patents being also attached.

It is recited in the motion that on March 17, 1931, United States patents Nos. 1,796,929 and 1,797,206, copies of which are attached to the motion, were issued to George E. Howard, on application filed July 16, 1917; that said patents constitute material and relevant evidence in this case, and that the Obear-Nester Glass Company has recently become aware of the issuance of said patents; that said patents disclose every substantial part of the alleged invention disclosed and claimed in the Peiler patent granted February 16, 1926, and particularly as to the claims held valid and infringed by the Obear-Nester Glass Company, as construed by this court. The application then sets out the particulars in which it is claimed the Howard patents anticipated the claims of the Peiler patent; that the Howard patents having issued on an application filed July 16, 1917, prior to the Peiler disclosure by application for the same invention, are material and relevant on the issue of anticipation. It is then alleged that the applicant has not been negligent in presenting this new defense, since the defense was not available until the issuance of said Howard patents, and the prosecution of the applications which matured into these patents has at all times been under the exclusive control and within the knowledge of the Hartford-Empire Company.

The Hartford-Empire Company in opposition to this motion filed a showing verified by oath of counsel for that company, in which it is denied that the alleged newly discovered evidence is in fact newly discovered, it being alleged that the subject-matter thereof has been known to the defendant and its counsel since before the action was tried in the lower court; that on December 20, 1930, defendant sought to have this cause reopened in the lower court to admit in evidence the subject-matter of the newly discovered evidence, which motion was denied; that the subject-matter of this newly discovered evidence has been considered by another court in a suit wherein it was offered in evidence by defendant's present counsel, and that the evidence was disregarded by that court in its opinion; that the motion is presented too late because defendant's counsel have known for years the subject-matter in question. It is then alleged that at the trial of this case before the lower court in January, 1928, George E. Howard, the patentee mentioned in defendant's motion, was called as a witness by defendant, and during his examination was confronted with a copy of his application; that an offer to interrogate Howard with reference thereto was objected to, which objection was sustained, and that defendant's counsel acquiesced in the ruling by not assigning error thereon when it took its appeal, and by not including in the transcript of the record any reference to such ruling; that Howard was not set up in defendant's answer as a prior inventor, which fact was pointed out by plaintiff in the trial during Howard's deposition, but defendant made no request to amend its answer in this respect; that in another suit upon the same Peiler patent between Hartford-Empire Company and the Kearns-Gorsuch Bottle Company testimony was taken in Columbus, Ohio, in February to May, 1928, at which time defendant called Mr. Howard as its witness and confronted him with his application for patent; that one of defendant's present counsel was present during the taking of the testimony in that case; that testimony in the Kearns-Gorsuch Case relating to this Howard 1917 application was stipulated into the record in a third suit on the same Peiler patent, entitled Hartford-Empire Company v. The Lamb Glass Company, in which testimony was taken in September, 1929, and in which one of defendant's counsel was counsel for the defendant in the Lamb Glass Company Case; that a fourth suit, Hartford-Empire Company v. The Nivison-Weiskopf Company, involving the same Peiler patent, was tried at Cincinnati in July, 1929, at which time defendant's present counsel were present and called Mr. Howard as their witness, examining him at length as to the disclosures of the Howard 1917 application, including those parts of said disclosure now relied upon in defendant's present motion; that the Howard 1917 application was received in evidence in that suit, but is not referred to in the court's opinion; that in all of these suits the courts sustained claims of the Peiler phase change patent No. 1,573,742, against which defendant's present motion is directed, over the Howard priority proofs, including the Howard 1917 application; that the Howard 1917 application appeared in another suit between the parties hereto, in the District Court at St. Louis, where the same counsel represented defendants as appear now for the defendant, in which suit, at request of defendant's counsel, a stipulation was agreed to in July, 1930, identifying a copy of said Howard 1917 application.

There has also been submitted without objection or protest of either party, certain purported excerpts from the record in Hartford-Empire Company v. Nivison-Weiskopf Company, above mentioned, tried in July, 1929, indicating that the complete file wrapper of the Howard 1917 application for patent was produced and offered in evidence as Plaintiff's Exhibit 69, this being offered by the same counsel...