Stearns-Roger Mfg. Co. v. Ruth

• Decision Date: 14 October 1935
• Docket Number: No. 1348.,1348.
• Citation: 79 F.2d 425
• Parties: STEARNS-ROGER MFG. CO. v. RUTH.
• Court: U.S. Court of Appeals — Tenth Circuit

79 F.2d 425 (1935)

STEARNS-ROGER MFG. CO. v. RUTH.^*

No. 1348.

Circuit Court of Appeals, Tenth Circuit.

October 14, 1935.

Forrest C. Northcutt and Jesse G. Northcutt, both of Denver, Colo., for petitioner.

Max Melville, of Denver, Colo., for respondent.

Before LEWIS and BRATTON, Circuit Judges.

LEWIS, Circuit Judge.

The bill to be filed, application for which is made, is in the case of Joseph P. Ruth, Jr., plaintiff, v. Stearns-Roger Manufacturing Company, a corporation, defendant, in the District Court for the District of Colorado. That is a patent infringement suit. Ruth as the owner of letters patent No. 1,277,750, issued to Pearce September 3, 1918, sued the corporation, and on final hearing the District Court on June 18, 1931, made findings of fact as follows:

"5. That the apparatus made and sold by the defendant is represented in drawing sheet No. 4965 annexed to defendant's answer to interrogatories filed by the plaintiff.

"6. That the apparatus so manufactured and sold by the defendant does not infringe upon claims 1 and 3 of said Patent No. 1,277,750 unless it is capable of being operated under normal and average conditions without employing the sands outlet."

This is followed by the court's conclusions of law.

"3. That claims 1 and 3 of Patent No. 1,277,750 are good and valid in law.

"4. That the apparatus represented in drawing sheet No. 4965 is capable of infringing and does infringe Claims 1 and 3 of said Patent No. 1,277,750."

Thereafter on July 2, 1931, the court entered its decree in favor of Ruth. The decree refers to the findings of fact and conclusions of law, and upon consideration thereof it enjoined the corporation from further infringement in manufacturing, using, or selling any apparatus of the kind theretofore manufactured and sold by defendant exemplified in said drawing sheet No. 4965 annexed to defendant's answers to plaintiff's interrogatories; that plaintiff recover from defendant the profits and gains which it had received by reason of past infringements of claims 1 and 3 of plaintiff's patent; and that the case be referred to a special master for an accounting. An appeal was taken to this court from the decree, and we affirmed. Stearns-Roger Mfg. Co. v. Ruth (C. C. A.) 62 F. (2d) 442. Thereupon the master was appointed, and he proceeded with the accounting, which has been completed. He took much testimony, confining it to apparatus or machines sold by defendant, which it had made in keeping with drawing sheet No. 4965, and parts made and sold as repairs to said machines. Said drawings displayed the sands outlets, and the machines were so manufactured.

Respondent opposes our granting permission to file the bill. It rests upon two alleged grounds: First. That the interlocutory decree is vague, ambiguous, indefinite and uncertain in that it does not clearly appear whether Ruth was to be awarded the profits received by the corporation in the sale of machines and parts therefor that were equipped with sands outlets through which a substantial portion of the tailings are discharged; that petitioner did not discover until June 29, 1935, the ambiguity, indefiniteness, and uncertainty in said interlocutory decree in that it does not appear therefrom whether the machines manufactured and sold by petitioner were equipped with sands outlets through which a large amount of tailings are discharged. Second. That Stearns-Roger Manufacturing Company has discovered since the filing of our mandate in the District Court new evidence material to the case, viz.: In the spring of 1933 Ruth served notices of infringement on petitioner's customers: that said customers thereafter caused tests to be made on the flotation machines sold by petitioner to them as to the amount and quantity of tailings that were discharged through the sands outlet in practical and commercial operation of the machines; that said tests showed that from 50 to 85 per cent. of tailings were discharged through the sands outlet. The dates of those tests are not given. It is alleged that subsequent to the dates of tests made by said customers, petitioner has itself caused tests and calculations to be made to determine the amount of tailings that were discharged through the sands outlet, and those tests show, as did the customers', 50 to 85 per cent.; that said sands outlet are essential in the commercial operation of the machines and reduces the cost; and that such evidence could not have been sooner discovered by the exercise of reasonable diligence.

It may be doubted whether the first ground stated rests solely on ambiguity and uncertainty in the decree. It seems rather a mingling of the two grounds. But, however that may be, the decree of the District Court as originally entered does not control. The mandate of this court in the light of our opinion on the appeal is the guide, and from that view we think no uncertainty can be found. The machine patented to Pearce and owned by Ruth, which was adjudged to be infringed as to claims 1 and 3, is shown in the drawing on page 443 of 62 F.(2d). It is observed that the froth or foam carrying mineral is discharged at the upper right-hand corner of the compartment and the tailings at a slightly lower level immediately to the left thereof. The infringing device is shown in 62 F.(2d) 443, at page 447. The froth overflows at the upper right-hand corner also, whereas the tailings pass through the opening at figure 1 at a much lower level than the froth overflow and are then carried upward over the top of the weir which is slightly lower than the froth overflow, the weir being shown at figure 3. At figure 2 the infringing machine had what is designated as sands outlet at the lower end of the weir. In column one in 62 F.(2d) 443, on page 448 of our opinion we observed that the Stearns-Roger Company contended, "that the heavier tailings pass out through the sands discharge opening 2." In column two on that page, after noting amendments of claims in the Pearce patent in the patent proceedings and their effect, we said: "We are of the opinion that these amendments so narrowed the claims that the inclusion of the sands hole 2 in the alleged infringing device would avoid infringement if it were essential to the operation of the device and if it were employed in the commercial use of the device. * * * However, the evidence established, and the trial court found, that the sands discharge was not necessary to a proper functioning of the device, and that in the use of the commercial device this hole was kept closed."

Further on we said: "The sands hole, as compared with the opening over the weir, is very small and only a slight and insignificant amount of tailings...