Siebring v. Hansen

• Decision Date: 28 June 1965
• Docket Number: No. 17814.,17814.
• Citation: 346 F.2d 474
• Parties: Claude SIEBRING d/b/a Siebring Manufacturing Company, and Owen Siebring, Appellants, v. Charles W. HANSEN and AFSCO, Inc., Appellees.
• Court: U.S. Court of Appeals — Eighth Circuit

346 F.2d 474 (1965)

Claude SIEBRING d/b/a Siebring Manufacturing Company, and Owen Siebring, Appellants, v. Charles W. HANSEN and AFSCO, Inc., Appellees.

No. 17814.

United States Court of Appeals Eighth Circuit.

June 2, 1965.

Rehearing Denied June 28, 1965.

Donald H. Zarley, of Dick, Zarley, McKee & Thomte, Des Moines, Iowa, made argument for appellant and filed brief with Bruce W. McKee and Dennis L. Thomte, Des Moines, Iowa, Robert R. Eidsmoe, of Gleysteen, Nelson, Harper, Kunze & Eidsmoe, Sioux City, Iowa, and Lucas J. DeKoster, Hull, Iowa.

Phillip H. Smith, of Merchant, Merchant & Gould, Minneapolis, Minn., made argument for appellees and filed brief with John D. Gould, Minneapolis, Minn.

Before MATTHES and BLACKMUN, Circuit Judges, and REGISTER, District Judge.

MATTHES, Circuit Judge.

This is a civil contempt proceeding in which the trial court, Honorable William C. Hanson, found Claude Siebring and Owen Siebring in contempt on the ground that they had continued to infringe a patent subsequent to and in violation of a previous court decree.¹ The basic question presented here is whether the court committed error in holding the Seibrings in contempt. The issue of infringement was also injected in the trial and it too was determined adversely to the Siebrings. The judgment of the court in this regard is also challenged by appellant.

The court's memorandum opinion which constitutes its findings of fact, conclusions of law, and order for the judgment, is reported at 231 F.Supp. 634. As an examination thereof will disclose, the court exhaustively reviewed the pertinent facts, stated the contentions of the parties, analyzed the issues, and declared and applied what it regarded to be the applicable and controlling legal principles. The thoroughness of the court's factual analysis obviates the necessity of another full recital of the pertinent evidence.

The background facts and the prior court proceedings are important. Charles W. Hansen, one of the moving parties below and an appellee here, procured patent 2,867,314 relating to an improved bunk feeder on January 6, 1959.² Claude Siebring, doing business as Siebring Manufacturing Company, manufactured and sold bunk feeders prior to the issuance of the Hansen patent. A patent infringement suit was filed by Hansen against Claude Siebring, d/b/a Siebring Manufacturing Company, in the United States District Court for the Northern District of Iowa, and on October 19, 1959, a consent decree was entered in that action. The decree embodied the essential elements of the written agreement the parties had entered into for the purpose of amicably settling their differences. Inasmuch as the trial court's opinion recites in full the court decree, Id. at 637, 638, a summary thereof should suffice for the purposes of this opinion. It decreed that patent 2,867,314 owned by Hansen "is good and valid in law"; that defendant (Claude Siebring) has infringed upon patent 2,867,314 by manufacturing and/or selling subsequent to issue date of the patent bunk feeders coming within the scope of the claims of the Hansen patent; that defendant "his heirs, employees, associates, servants, privies" etc., shall be permanently enjoined and forever restrained from manufacturing and/or selling devices which constitute an infringement of Hansen's patent; and that the injunction shall not restrain "defendant or those in consort with him" from manufacturing and/or selling devices which do not come within the scope of the claims of the Hansen patent. Pursuant to the consent decree, a writ of injunction was duly issued.

The present proceeding was instituted on February 1, 1962, by the filing of a motion for contempt in which it was alleged that defendant has "wrongfully and contumaciously continued to manufacture and sell devices which constitute an infringement of plaintiff's said Patent 2,867,314 since the issue of and in violation of the beforesaid Writ of Permanent Injunction." A show cause order was issued. Thereafter, Owen Siebring, who was a partner with his father in the business, was permitted to intervene, resistances to the motion for contempt were filed and thereby the issues were made up and framed.

The trial court correctly stated, Id. at 640, that the question as to contempt was whether "the defendants' machines sold after the Consent Decree and Injunction contained merely colorable changes from the Exhibit 8 type machine which was the subject of the Consent Decree and Injunction." Although entertaining the view that the question whether the post-decree machines manufactured and sold by defendants also infringed upon appellees' protected machine was not an issue in the case, the court, at the insistence of the Siebrings and because of the plenary hearing, in which the scope of the evidence was all-encompassing, also considered and resolved the infringement question.

We are satisfied that the crucial and decisive trial issue was not burdened with undue and unusual complications. The rather simple question was whether the bunk feeders manufactured and sold by the Siebrings subsequent to the decree were mere colorable imitations of the feeders which were encompassed within the consent decree. However, astute and ingenious counsel for appellant persisted in seeking to attack the validity of the Hansen patent and to convert the hearing into a full-scale patent infringement contest.

The legal principles which are ordinarily applicable and serve as guidelines in contempt proceedings are well settled.

Courts are empowered by the provisions of Title 35 U.S.C.A. § 283, to grant injunctions to prevent the violation of any right secured by patent. And one who violates an injunction restraining him from infringing upon a patent may be held in contempt. 18 U.S.C.A. § 401; Hopp Press, Inc. v. Joseph Freeman & Co., Inc., 323 F.2d 636 (2 Cir. 1963); Wire Rope Appliance Co. v. Eureka Tool Co., 256 F. 677 (D.Ct. Kans.), affirmed 265 F. 673 (8 Cir. 1920); American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d 116 (8 Cir. 1935). In a contempt proceeding for alleged violation of an injunction entered pursuant to a consent decree in the original action, the validity of patent claims is not in issue. T. L. Smith Co. v. Cement Tile Machinery Co., 257 F. 423 (8 Cir. 1919), cert. denied 250 U.S. 669, 40 S.Ct. 14, 63 L.Ed. 1198 (1919); D. E. Stearns Company v. Brashear, 145 F. Supp. 735 (W.D.Mo.1956); Kiwi Coders Corporation v. Acro Tool & Die Works, 250 F.2d 562 (7 Cir. 1957); Wire Rope Appliance Co. v. Eureka Tool Co., supra; Wadsworth Electric Mfg. Co. v. Westinghouse Electric & Mfg. Co., 71 F.2d 850 (6 Cir. 1934), cert. denied Wadsworth Electric Mfg. Co. v. Sachs, 294 U.S. 724, 55 S.Ct. 552, 79 L.Ed. 1255 (1935); Hopp Press, Inc. v. Joseph Freeman & Co., Inc., supra, where the court succinctly stated, 323 F.2d at 637: "The validity of the patent is not before the court, for the consent decree made that question res judicata for the purposes of this appeal." (Citing cases). A consent decree is a judicial act, United States v. Swift & Co., 286 U.S. 106, 114, 115, 52 S.Ct. 460, 76 L.Ed. 999 (1932), and possesses the same force and character as a judgment rendered following a contested trial. Kiwi Coders Corporation v. Acro Tool & Die Works, supra.

A contempt proceeding for violation of a patent infringement injunction will lie where the new and alleged offending device is merely "colorably" different from the enjoined device or from the patent. In American Foundry & Mfg. Co. v. Josam Mfg. Co., supra, this Court held, 79 F.2d at 117:

"As will be hereinafter shown, all subsequent constructions by a convicted infringer are not triable in contempt proceedings. Only where such constructions are merely `colorably\' different from the enjoined device or from the patent is the issue so triable. Such constructions may turn out to be infringements, but if they are more than `colorably\' different, the issue of infringement must be otherwise determined than by a contempt proceeding. Therefore, when the issue of infringement is presented in a contempt proceeding, the court must first determine whether it can properly entertain the issue in that proceeding."

See also 3 Walker on Patents, Sec. 818 (Deller's Edition 1937), and compare Wadsworth Electric Mfg. Co. v. Westinghouse Electric & Mfg. Co., supra; Baltz v. Walgreen, 198 F.Supp. 22 (W.D.Tenn. 1961).

Thus, in light of the settled state of the law which delineates the issues that may permissibly be adjudicated in a contempt proceeding, we find no merit in appellant's contention that the court erred in failing to adjudicate the validity of the Hansen patent. That question has been conclusively settled and determined by the consent decree and is res judicata for purposes of this appeal. The argument that Owen Siebring (appellant) is not bound by the consent decree because he was not a party to the agreement and was not restrained by the court's injunction is lacking in substance. The facts are that Owen was a partner with his father in the Siebring business — he was active in its management, he was fully aware of the terms of the agreement forming the foundation for the consent decree, indeed he signed the agreement as a witness to his father's signature, and at all times understood the import of the decree. But it is not necessary to rest our conclusion on that basis. The trial court permitted Owen to intervene in this proceeding, stating:

"In addition to other submissions in this cause, one Owen Siebring has made a Motion to Intervene. This motion should be granted under Rule 24 because he may be liable if it is determined that Claude Siebring, the partner of Owen Siebring, has been infringing on the patent of the plaintiff. A partnership is liable in an action for infringement committed in the regular course of the partnership business by one or more of the partners. A manager of the partnership is a joint infringer. Featherstone v. Ormonde Cycle Co.,

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