Slip Scarf Co. v. Wm. Filene's Sons Co.

• Decision Date: 05 June 1923
• Docket Number: 1622.
• Parties: SLIP SCARF CO. v. WM. FILENE'S SONS CO.
• Court: U.S. Court of Appeals — First Circuit

289 F. 641

SLIP SCARF CO. v. WM. FILENE'S SONS CO.

No. 1622.

United States Court of Appeals, First Circuit.

June 5, 1923

Alan D Kenyon, of New York City (Alfred H. Hildreth, of Boston Mass., on the brief), for plaintiff in error.

Jacob J. Kaplan, of Boston, Mass., and Clarence O. McKay and Edwin J. Prindle, both of New York City (Dunbar, Nutter &amp McClennen, of Boston, Mass., on the brief), for defendant in error.

Before BINGHAM, JOHNSON, and ANDERSON, Circuit Judges.

BINGHAM Circuit Judge.

This is an action at law to recover damages for the alleged infringement by Wm. Filene's Sons Company of United States letters patent No. 1,005,835, applied for June 10 1908, issued October 17, 1911, to the plaintiff, the Slip Scarf Company, assignee of Hill, for an improvement in neckties, and of reissue letters patent No. 14,142, applied for originally on the 21st day of August, 1908, reissued May 30, 1916, to the plaintiff as assignee of Keys, for an improvement in neckwear. The defenses are noninvention, noninfringement, and want of novelty, because of certain alleged prior patents and prior uses.

We are met at the threshold of the case with defendant's motion to dismiss the writ of error, on the ground that the bill of exceptions was 'not filed within the time allowed by law or rules of the District Court. ' It would seem that counsel had misconceived the nature of their motion. Treated as a motion to dismiss, it states no valid ground for dismissal, as the writ was sued out at the term at which final judgment was entered. But if the motion be treated as one to strike the bill of exceptions from the record, on the ground that it was not filed within the time allowed by law or rules of the District Court, the question is of a more serous nature, because the matters desired to be reviewed are contained in the bill of exceptions. Treating the motion as one of the latter character, we are nevertheless of the opinion that it must be denied.

According to the record, the verdict was rendered November 23, 1921, at the September term of court. On November 25, 1921, and within the three days allowed by rule 16 of the District Court, the defendants filed a motion to set aside the verdict and for a new trial. The cause was then continued from term to term until the March term, 1922, when, on March 30, the motion was heard, and thereafter on May 4, denied. On May 15, 1922, and within twenty days from the denial of the motion for a new trial, the time for filing a bill of exceptions was extended to July 10, 1922, and on May 24 the case was continued to the June term, 1922, when, on July 7, 1922, a bill of exceptions was filed. The cause was then continued to the September term, 1922, when, on November 22, 1922, a substitute bill of exceptions was filed and allowed, and at the same term, on December 4, 1922, judgment was entered for the defendant.

Rule 19 of the District Court is as follows:

'Bills of exceptions to any ruling of the court may be filed, and notice thereof in writing given to the adverse party within twenty days after the ruling is made, or in case of rulings made during a trial or hearing on the merits within twenty days after the verdict of the jury or finding by the court, unless the court or judge shall otherwise order; and it or he may for good reason allow a period therefor beyond the term or after judgment.'

According to the letter of the rule, a bill of exceptions is to be filed within 20 days after the verdict of the jury. But where a motion for a new trial is interposed, the verdict, as well as any judgment that may have been entered thereon, becomes contingent until the motion has been passed upon and determined. Until then it cannot be known that there is any occasion for filing a bill of exceptions, and, this being so, no good reason can exist for saying that the time for doing so has begun to run or is past. It has been the practice in this circuit, as well as in other circuits, to allow bills of exceptions to be filed within 20 days from the denial of a motion for a new trial and to allow an extension of time for this purpose, if applied for within the twenty days. Merchants' Insurance Co. v. Buckner, 98 F. 222, 39 C.C.A. 19; Kentucky Distilleries & Warehouse Co. v. Lillard, 160 F. 34, 87 C.C.A. 190; Mahoning Valley Ry. Co. v. O'Hara, 196 F. 945, 116 C.C.A. 495; Tullis v. Lake Erie & W.R. co., 105 F. 554, 557, 44 C.C.A. 597.

In Kingman v. Western Mfg. Co., 170 U.S. 675, 678, 680, 18 Sup.Ct. 786, 42 L.Ed. 1192, the question as to the effect of a motion for a new trial upon the running of the time within which a writ of error must be prosecuted or an appeal taken was under consideration. A statute of Nebraska provided that applications for new trial should be made at the term when the verdict was rendered, and within three days after verdict, unless unavoidably prevented. In that case, the court said:

'The motion for new trial in this case was filed within three days after the return of the verdict, and seasonably within the rule of the state statute, or the common-law rule, and it is said, within the rule enforced by the United States courts in that district. No leave to file it was required, and as it was entertained by the court, argued by counsel without objection, and passed upon, it must be presumed that it was regularly and properly made. This being so, the case falls within the rule that if a motion or a petition for rehearing is made or presented in season and entertained by the court, the time limited for a writ of error or appeal does not begin to run until the motion or petition is disposed of. Until then the judgment or decree does not take final effect for the purposes of the writ of error or appeal.'

See, also, on this subject, United States v. Ellicott, 223 U.S. 524, 32 Sup.Ct. 334, 56 L.Ed. 535; Texas P.R.R. v. Murphy, 111 U.S. 488, 4 Sup.Ct. 497, 28 L.Ed. 492; Title Guaranty Co. v. General Electric Co., 222 U.S. 401, 403, 32 Sup.Ct. 168, 56 L.Ed. 248.

If a motion for rehearing will operate to stay the running of the time fixed by statute within which to prosecute a writ of error or appeal, we think that it will operate with equal effect to stay the time fixed by rule of court for filing a bill of exceptions.

At the close of all the evidence, the defendant asked the court to direct a verdict in its favor, assigning numerous grounds, one of which was that claims 1, 2, and 3 of the Hill patent were not infringed by the structures of the defendant. This was denied, subject to the defendant's exception. The plaintiff did not ask for a directed verdict as to any of the claims in either patent. The case was submitted to the jury, which returned a verdict for the defendant, and also made certain special findings in answer to specific questions submitted to them by the court.

In the Hill patent, claims 1, 2, 3, 4, 8, 11, 13, and 15 were put in issue. Of these claims, 1, 2, and 3 differ from the remaining claims, in that the neckband, or intermediate section of the tie, is not only relatively thin, but relatively smooth as compared with the end sections; whereas, in the remaining claims, the neckband, or intermediate section, is only relatively thin as compared with the end sections. The first question submitted to the jury comprised only the elements embodied in claims 4, 8, 11, 13, and 15, and read as follows:

'1. Was an interlining thinner in the neckband than in the ends used between folds of silk or other material to which it was fastened by stitching, in making neckties before June 10, 1908?'

This question the jury answered 'Yes,' thereby finding the combination of elements constituting claims 4, 8, 11, 13, and 15 were old.

The next question as to the Hill patent was No. 3, and read as follows:

'3. Was the improvement in neckties shown by the Hill patent of such character as to involve invention?'

To this question the jury answered 'No.'

The remaining question as to the Hill patent was No. 5, and read as follows:

'5. Is the Hill patent void for lack of novelty?'

This question the jury answered 'Yes.' Before submitting its case as to the Keys patent, the plaintiff withdrew claim 6, and went to the jury on claims 4 and 5 only. These claims differ from one another in one particular. In claim 4 the interlining is required to be 'thinner in the neckband than in the tying ends. ' While in claim 5, which is the broader claim, the character of the interlining is not required to be thinner in the neckband; it may be of the same thickness throughout its length. In every other respect the claims are alike, and their elements are stated in question 2, which was submitted to the jury as follows:

'2. Were rows of stitching extending lengthwise of the neckband near each edge, brought together in a point near the edges and engaging the cover and interlining, in use before August, 1908?'

To this question the jury answered 'No,' thereby finding that stitching of the character described in these two claims was new-- whether used in connection with an interlining that was thinner than the neckband, or of uniform thickness throughout its length.

The next question under this patent was No. 4:

'4. Was the improvement in neckties shown by the Keys patent of such character as to involve invention?'

This the jury answered 'No.'

The remaining question in regard to this patent was No. 6:

'6. Was the Keys patent void for lack of novelty?'

The answer was 'Yes.'

The record does not show but what these questions, both as to scope and substance, were submitted with the approval of both parties. On the coming in of the verdict, the plaintiff moved to set aside the verdict and for a new trial, on the ground (1) that the jury misinterpreted and misapplied, or disregarded the...