Park-In Theatres v. Waters

• Decision Date: 14 November 1950
• Docket Number: No. 13145.,13145.
• Citation: Park-In Theatres v. Waters, 185 F.2d 193 (5th Cir. 1950)
• Parties: PARK-IN THEATRES, Inc. v. WATERS et al.
• Court: U.S. Court of Appeals — Fifth Circuit

185 F.2d 193 (1950)

PARK-IN THEATRES, Inc. v. WATERS et al.

No. 13145.

United States Court of Appeals Fifth Circuit.

November 14, 1950.

Alvin W. Vogtle, Jr., Birmingham, Ala., Leonard L. Kalish, Philadelphia, Pa., for appellant.

William S. Pritchard, Winston B. McCall, Birmingham, Ala., for appellees.

Before McCORD, BORAH and RUSSELL, Circuit Judges.

RUSSELL, Circuit Judge.

This appeal is from an order of the trial Court sustaining the defendant's motion to dismiss the appellant's suit alleging infringement of Hollingshead Patent No. 1,909,537, and in which order of dismissal the Court determined, as an additional or alternative ground, that the defendant's motion for summary judgment likewise should be granted.¹

The complaint, sufficient as a pleading, averred, among other matters, the issuance of the patent, in a paragraph which concluded, "which patent is hereby proffered." It also alleged that the subject matter of the patent constituted "an original inventive contribution of great value and benefit to the public at large," the merit of which the public had recognized by its patronage, in ever increasing extent, of the drive-in theatres embodying such invention. Before answering, the defendants moved to dismiss the complaint upon various grounds, the one now material being urged in various forms, but all to the effect that the subject matter of the plaintiff's alleged invention was not a patentable invention. Thereafter, the defendants moved for a summary judgment in their favor under Rule 56, Rules of Civil Procedure, 28 U.S. C.A.² The material portion of the only affidavit referred to is set forth below.³ In the course of the designation and preparation of the record on appeal, plaintiff-appellant, in a motion for an order directing the Clerk to include a printed copy of the patent in suit in the record to this Court, called attention to the plaintiff's proffer of the patent by his complaint, but set forth that a copy thereof was not attached to the complaint nor otherwise filed by the plaintiff, nor was it filed by the defendant. This motion was overruled by the Court for reasons stated.⁴

In considering the merits of the appeal we would ordinarily of course consider only the correctness of the result reached by the trial Court, and not the validity of the reasons given for its judgment. We would do this also uninfluenced by procedural matters which did not prejudicially affect or induce the result. The present, however, is not such a case, and in the circumstances here we are unable to overlook or approve the manner of the disposition of the appellant's complaint and case. This view, in final analysis, is induced by our conclusion that the trial Court made no independent determination of the validity of the patent in suit. Such a determination was manifestly not made in ruling upon the motion to dismiss the complaint, for it clearly appears that the provisions and claims of the patent in suit were not before the Court and therefore not available upon motion for adjudication of their validity and effect. Furthermore, the statement of the Court in overruling the motion to include a copy of the patent in the transcript that "the same was never shown or presented to the Court" until after final judgment, is entirely correct in fact and in law, for neither the motion to dismiss nor the motion for summary judgment, or the affidavit in support thereof, tendered the patent in suit for the consideration of the Court. It was therefore not before the Court for its consideration in making any independent determination of the validity of the patent, and this whether the matter be considered adjudged by a ruling upon either or both of the motions. It is true that this patent was under consideration in the case⁵ cited in the affidavit in support of the motion for summary judgment. However, in that case the Court had for its consideration, upon appeal, the entire record of evidence presented in the trial Court, as well as the conclusion of the trial Court which upheld the validity of the patent. Furthermore, the affidavit in support of the motion for summary judgment asserts no facts of the issue involved, but only that a legal decision had been rendered, and wholly omits any claim that the decision was predicated upon the same or all available facts which could or would be presented in the present case. The affidavit clearly omits even an attempt to incorporate the facts of the adjudication relied upon in any showing of facts to be considered by the Court in passing upon the motion for summary judgment as a matter of law.⁶ Actually the only attempt in the affidavit to adduce any facts is by reference to the opinion, and we think this will not serve the purpose of averring facts in support of the motion for summary judgment since, in any event, it does not present to the Court for consideration the record in the adjudication relied upon. It is thus clear that the Court of necessity gave to the ruling in the reported case, to all practical effects, the binding force of res adjudicata. But that proceeding, involving different defendants, did not have any such controlling force. "Neither reason nor authority supports the contention that an adjudication adverse to any or all the claims of a patent precludes another suit upon the same claims against a different defendant. While the earlier decision may by comity be given great weight in a later litigation and thus persuade the court to render a like decree, it is not res adjudicata and may not be pleaded as a defense," Triplett v. Lowell, 297 U.S. 638, 642, 56 S.Ct. 645, 647, 80 L.Ed. 949.⁷

We conclude that this case should be remanded to the trial Court for further proceedings to afford opportunity for development of the issues involved. In doing so, we in no wise intimate the result to be reached by the trial Court when its independent determination is made. We do not consider the validity of the patent in suit, for as to this we should confine our consideration to review of the legal determination of the Court of original jurisdiction, when and if this becomes necessary. We here only enforce the requirement that the trial Court, in making its adjudication of the validity of the patent, should not give to a former adjudication between different parties, the effect of res adjudicata, — that the patent should be before the Court for its consideration and, further, — that if the Court deems consideration of any facts necessary or helpful in settling the question of invention, or validity of claims,...