Westinghouse Elec. & Mfg. Co. v. Stanley Instrument Co.

• Decision Date: 14 June 1905
• Docket Number: 504.
• Citation: 138 F. 823
• Parties: WESTINGHOUSE ELECTRIC & MFG. CO. v. STANLEY INSTRUMENT CO.
• Court: U.S. Court of Appeals — First Circuit

138 F. 823

WESTINGHOUSE ELECTRIC & MFG. CO. v. STANLEY INSTRUMENT CO.

No. 504.

United States Court of Appeals, First Circuit.

June 14, 1905

W. K Richardson and Thomas B. Kerr, for appellant.

Charles E. Mitchell, Wm. Houston Kenyon, and Henry B. Brownell, for appellee.

Before PUTNAM, Circuit Judge, and ALDRICH and BROWN, District Judges.

PUTNAM Circuit Judge.

On this appeal we entered a decree against the petitioner, the respondent below and now the appellee, who brings this petition, which it bases on the claim that the case is within section 4887 of the Revised Statutes as it stood before it was amended, and that, pending this appeal, the patents sued on expired by limitation as therein provided. It prays that this court shall so amend its judgment as to deny any injunction, and as to direct that the accounting shall cease as of the date when the patents expired, or that the petitioner may have leave to proceed in the proper way in the Circuit Court to accomplish the same result. The petition has been answered, and proofs taken, and the whole submitted to us on briefs.

The decree of the Circuit Court was in favor of the petitioner and the complainant below appealed. The patents in suit issued on December 6, 1893, on applications filed in December, 1888. The present bill was filed in 1899, and the decree was entered in the Circuit Court on the 16th day of March, 1903. An appeal was promptly taken, and the same came on for hearing before us in April, 1904. Judgment was rendered by us, as already said, on September 9, 1904 (133 F 167), reversing the decree of the Circuit Court, and remanding the case with instructions to enter a decree in favor of the complainant for an injunction and an accounting and to take such further proceedings as might be required not inconsistent with our opinion. Afterwards, on the application of the present petitioner, the mandate was stayed, and the petitioner applied to the Supreme Court for a writ of certiorari, which was denied on November 28, 1904. This petition was filed on December 7, 1904.

The practice on a petition of this nature has been sufficiently explained by us in In re Gamewell Fire Alarm Telegraph Co., 73 F. 908, 20 C.C.A. 111, and in Boston Electric St. Ry. Co. v. Bemis Car-Box Co., 98 F. 121, 38 C.C.A. 661. In those cases we stated to what extent appellate tribunals will ordinarily go with regard to the merits on an application of this character, and also as to laches; but our own records satisfy us that on this petition we can dispose of all essential questions. Therefore, in view of the multiplied and protracted litigations over the patents in suit, and in view also of the fact that they now have only a few years to run, we deem it our duty to consider everything which we can consider, and end this suit so far as it is in our power to do so.

The respondent in this petition, the complainant below, maintains that the foreign patents were for identically the same subject-matters as two certain patents issued to the complainant in April, 1889, and, therefore, before the patents in suit issued. It therefore further maintains that, if the present position of the petitioner were correct, to the effect that the foreign patents covered the same subject-matters as the patents in suit, it follows that the patents issued in 1889 were also for the same subject-matters, and that therefore they were a complete defense on the merits of the present bill. Consequently it urges that, as the petitioner, from its standpoint, could have set up the patents of 1889 as a defense to the merits, it is guilty of such laches that the petition must be dismissed. If this were all that there is of the petition, it would meet all of the petitioner's propositions; but, as we go on, it will be perceived that it is not all.

The foreign patents to which the petition relates expired, one on the 16th day of April, 1903, which was a few days after the decree entered in the Circuit Court, and the other on the 3d day of December, 1903, which was after the present appeal was taken, and before it was heard by us. We therefore have a question of laches which cannot be wholly overlooked. Under the circumstances, it was the duty of the petitioner to have brought these facts to our attention at or before the time the appeal was argued on its merits; and it failed in its duty in allowing us to proceed to hearing an issue with regard to an injunction which, from the standpoint of the petitioner, had ceased to involve anything except moot questions. It was its duty to have then presented the facts which it now brings to our attention, instead of holding them in reserve for further consideration after we had been allowed, by its entire silence, to investigate and dispose of the voluminous and difficult questions which the record involved. It had ample opportunity to have seasonably brought before us, in an informal manner, all the questions which the present petition raises, as was fully explained by us in Mossberg v. Nutter, 124 F. 966, 60 C.C.A. 98.

As the foreign patents referred to are British patents taken out by the same inventor, Tesla, as those in issue, relating to the same that they were not discovered except as the result of search made after our judgment was entered on September 9, 1904, does not avail to excuse the petitioner. In Re Gamewell Fire Alarm Telegraph Co., 73 F. 908, 913, 914, 20 C.C.A. 111, already referred to, we pointed out that, as there is no limit to the amount of published material, there will be no end to the number of applications based on new discoveries thereof, one after another, unless very strict rules are insisted on in reference thereto. Our expressions were approved by the Circuit Court of Appeals for the Sixth Circuit in Kissinger-Ison Co. v. Bradford Belting Co., 123 F. 91, 92, 59 C.C.A. 221. Certainly, in a case which has involved so much litigation and so much investigation as this now before us, it is impossible to excuse the petitioner for not having discovered the British patents, and brought them to our attention seasonably, at the time and in the manner we have explained. The present case goes further, because the petition admits that no search for foreign patents with regard to the present question was made until after our decree of September 9, 1904, and that the previous searches were in regard to the prior art. It will appear, however, that we have no occasion to determine absolutely on a question like this now before us, which involves not merely the petitioner but also the general public, whether this laches would justify us in wholly denying relief; but on account thereof, even if we should grant any relief, the petitioner should be held to stand practically in the ordinary position of one asking leave to proceed in review on newly discovered matter, to the extent that, before the proceeding in review can make substantial progress, the judgment entered must be performed so far as it is not absolutely unjust that it should be. Ricker v. Powell, 100 U.S. 104, 107, 108, 25 L.Ed. 527; Story's Equity Pleadings (10th Ed.) Sec. 406. Of course, in this case, this rule cannot be strictly applied, because there is no final decree; but, if we should grant leave to file a bill in the nature of a supplemental bill, equity would require us, for the reasons we have stated, to proceed in this respect by analogy to the practice with reference to bills of review. On this petition, however, the merits are so clearly against the petitioner that it is our duty to hold the case firmly, with the view of preventing further unnecessary litigation.

The statute on which the petitioner relies is, as we have said, section 4887 of the Revised Statutes (U.S.Comp.St. 1901, p. 3382), as it stood before it was amended, as follows:

'No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years.'

In Bate Refrigerator Company v. Sulzberger, 157 U.S. 1, 36 15 Sup.Ct. 508, 516, 39 L.Ed. 601, the language of this provision was spoken of generally as 'so plain and unambiguous that a refusal to recognize its natural, obvious meaning would be justly regarded as indicating a purpose to change the law by judicial action based upon some supposed policy of Congress. ' So it seems to us as applied to the present case. It is a 'patent' granted for an...