Wenborne-Karpen Dryer Co. v. Cutler Dry Kiln Co.

• Decision Date: 15 January 1927
• Citation: 21 F.2d 692
• Parties: WENBORNE-KARPEN DRYER CO. v. CUTLER DRY KILN CO.
• Court: U.S. District Court — Western District of New York

21 F.2d 692 (1927)

WENBORNE-KARPEN DRYER CO. v. CUTLER DRY KILN CO.

District Court, W. D. New York.

January 15, 1927.

William R. Rummler and Walter F. Boye, both of Chicago, Ill., Cyrus W. Rice, of Grand Rapids, Mich., and Edward R. Bosley, of Buffalo, N. Y., for plaintiff.

Drury W. Cooper, of New York City, and J. William Ellis, of Buffalo, N. Y., for defendant.

HAZEL, District Judge.

On this application, plaintiff asks for a rehearing on an issue of equitable estoppel, or, in the substantial wording of the brief, to set the case down for further proceedings and to present additional evidence to negative prior uses. The motion is based mainly on the ground that the plea of equitable estoppel was not specifically passed upon or decided either by this court or the Circuit Court of Appeals, which reversed the decree of this court and commanded that such further proceedings be had in said case in accordance with its decision, as, according to right and justice, ought to be had, 290 F. 625.

This court had ruled (285 F. 73) that the Grosvenor process patent in controversy (No. 1,186,477) was valid and infringed. The issue raised by the supplemented bill, of the privity of defendant with the prior Rockford Bookcase Company action, decided in the Northern District of Illinois, was barely suggested in the brief submitted by plaintiff in this court, and, indeed, was not "now relied upon"; it being explained that depositions had been taken regarding newly discovered prior uses, and that plaintiff preferred that the merits thereof be considered and passed upon.

The Circuit Court of Appeals deemed the evidence relating to prior uses sufficient, and sustained the defense of noninfringement without, in its opinion, referring to the alleged plea of estoppel by privity with the Rockford adjudication. In the petition for rehearing presented by plaintiff to the appellate court, one of the points made related to the alleged estoppel, and reference had also been made thereto in the original brief. The said issue was also presented by petition for rehearing by a licensee. In its decision, denying the rehearing, the court said: "We have examined the petition for rehearing and are not disposed to entertain it in substance." Subsequently application was made to the Supreme Court for certiorari, and, in the brief there submitted, it was again urged that the defendant was in privity with the Rockford Bookcase Company, and accordingly was equitably estopped to deny the validity of the patent in suit. In the circumstances, defendant's contention that plaintiff has not been deprived of its day in court is not without substance. It is unnecessary, however, for me to decide this question. By its mandate, the Circuit Court of Appeals has placed an imperative duty upon this court, viz. to carry out its judgment. It does not direct a new trial or further proceedings — nothing is left open by interpretation or implication, for further action by this court, either with relation to the question of estoppel, or taking or considering additional evidence as to prior uses. It is not discretionary to do so, and this court is constrained to rule that, since the question of estoppel was presented and argued to the appellate tribunal, this court is devoid of power to do anything other than what is required to be done by the mandate.

In Sibbald v. United States, 12 Pet. 488, 9 L. Ed. 1167, the Supreme Court has established the principle applicable to the duty devolving upon the inferior court to render specific judgment. In that case the learned court said:

"No principle is better settled, or of more universal application, than that no court can reverse or annul its own final decrees or judgments, for errors of fact or law, after the term in which they...