Wilson Research Corp. v. Piolite Plastics Corp.

• Decision Date: 16 September 1964
• Docket Number: No. 6128.,6128.
• Citation: 336 F.2d 303
• Parties: WILSON RESEARCH CORPORATION, Plaintiff, Appellant, v. PIOLITE PLASTICS CORPORATION, Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

336 F.2d 303 (1964)

WILSON RESEARCH CORPORATION, Plaintiff, Appellant, v. PIOLITE PLASTICS CORPORATION, Defendant, Appellee.

No. 6128.

United States Court of Appeals First Circuit.

September 16, 1964.

Robert B. Russell and Russell, Chittick & Pfund, Boston, Mass., for appellant.

George W. Crowley, Herbert P. Kenway and Kenway, Jenney & Hildreth, Boston, Mass., for appellee.

Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.

WOODBURY, Chief Judge.

The district court in Wilson Research Corp. v. Piolite Plastics Corp., 218 F. Supp. 145, found Wilson's patent valid but not infringed and entered judgment accordingly. This court on appeal, 327 F.2d 139 (1963), did not disturb the district court's finding of validity but held the patent infringed and entered judgment "vacating the judgment of the District Court and remanding the action to that court for further proceedings not inconsistent" with its opinion. The district court thereupon entered judgment in conformity with this court's mandate.

About a month later the defendant moved in the court below under Civil Rule 60(b) for relief from that court's judgment in conformity with our mandate on the ground of newly discovered evidence and for a stay of execution of the judgment pending decision on its motion in which it alleged facts supported by affidavits tending to show the invalidity of the patent on the ground that the subject matter thereof was in use and offered for sale prior to the invention of the plaintiff's assignor. The court below held that it had no jurisdiction to examine or alter the judgment it had entered on the mandate of this court without our leave and denied the defendant's application for stay of execution under Civil Rule 60(b) but without prejudice to its renewal should this court grant it leave to act on the motion. The defendant thereupon filed a motion in this court for recall of our mandate and for leave for the district court to consider its motion under Rule 60(b).

Butcher & Sherrerd v. Welsh, 206 F.2d 259 (C.A. 3, 1963), cert. denied, Alker v. Butcher & Sherrerd, 346 U.S. 925, 74 S.Ct. 312, 98 L.Ed. 418 (1954), and Geuder, Paeschke & Frey Co. v. Clark, 288 F.2d 1, 85 A.L.R.2d 766 (C.A. 7), cert. denied, 368 U.S. 826, 82 S.Ct. 47, 7 L.Ed. 2d 30 (1961), are authorities in support of the district court's position, although perhaps distinguishable on the ground that in those cases general mandates of affirmance were involved. In re Potts, 166 U.S. 263, 17 S.Ct. 520, 141 L.Ed. 994 (1897), however, squarely supports the decision of the district court

In Potts v. Creager, 155 U.S. 597, 15 S.Ct. 194, 39 L.Ed. 275 (1895), the Court reversed a decree of a circuit court holding a patent invalid and remanded the case for further proceedings in that court in conformity with its opinion. The circuit court thereupon entered a decree "in conformity with the said mandate" setting aside its former decree, adjudging the patent valid and infringed, and referring the case to a master for an award of damages. The master filed his report, but before action thereon the defendants petitioned for a rehearing on the ground of newly discovered evidence affecting the novelty of the invention, and the circuit court granted the petition. The Court in In re Potts, supra, held this action of the circuit court to be "irregular and unauthorized," 166 U.S. page 268, 17 S.Ct. page 522, and beyond its power without first obtaining the Supreme Court's permission.

In re Potts rules the case at bar unless its holding...