FREEMAN-SWEET CO. et al. v. LUMINOUS UNIT CO., 264 F. 107

MACK, Circuit Judge. The opinion sustaining the validity of letters patent No. 1,076,418 and finding infringement of claim 1, but not of claim 2, thereof, is reported in 249 Fed. 876. In a prior suit by appellee against R. Williamson & Co., both claim 1 and claim 2 were found valid and infringed. 241 Fed. 265, affirmed in this court 245 Fed. 988,-C. C. A. -. The facts, except those hereinafter set forth, bearing upon the making of appellant the Reflectolyte Co., a party defendant, will be found fully stated in these opinions. 1.

This former decision, to which these appellants were not parties, is, of course, not res adjudicata as to them. But it is more than persuasive; the validity of a patent, once sustained on appeal by this court, is not subject to complete re-examination at the instance of each subsequent alleged infringer. Unless clearly shown to be erroneous, the determination by this court of the validity of a patent on full hearing in a contested suit, will not be reconsidered.

New matter, not theretofore introduced in evidence, and not merely cumulative in character, will be given full consideration; even the conclusions reached on the former evidence may be challenged as clearly erroneous. But the fact that alleged anticipating patents, or the file wrapper and contents, though in the record, are not specifically discussed in the earlier opinion, is of course, far from a demonstration, or even a suggestion, that they were not duly weighed or that the conclusions reached on the former record are clearly wrong.

We have, however, in view of the earnest appeal of counsel, reexamined these matters, as well as the additional patents and other evidence appearing in this record; the latter is clearly but cumulative; the former does not change the conclusions heretofore arrived at as to the validity of the claims. 2. Infringement. — While the language of the claims was changed from time to time to meet the Examiner’s objections, at no time did the applicant, either voluntarily or to meet a specific objection, limit himself to a “wholly flat” reflector.

In fact, the omission from claim 1 of the word “wholly,” used in claim 2, is a clear indication that applicant did not intend to make an absolutely flat form an essential element in the claim, so as to waive any equivalent that would secure the same result in substantially the same manner. Giving the claim only the most limited range of equivalents, in holding it to cover, as an element in the combination, a reflector not absolutely flat, but deviating therefrom only to an extent that no substantial change whatsoever in function, result, or operation is thereby involved, defendants clearly infringe. 3.

While an uncertified copy of its own record in the earlier case was inadmissible in evidence, no harm resulted, inasmuch as it was unnecessary to introduce the record; the court takes judicial notice of its records for all proper purposes.

The copy, however, was not introduced, and was not used for the improper purpose of bringing into this case, as evidence bearing upon the merits of the controversy, the testimony there given; the sole purpose was to show on what matters the decision in the former case was or might have been based, so as to make clear the extent and the bearings of the conclusions there reached. 4.

At the trial, counsel of record for the sole defendant Freeman-Sweet Company, stated, in answer to an inquiry, that he had been employed and was compensated by the appellant, the Reilectolyte Company to defend this suit brought against its vendee; he conceded that it was privy to the case and that the decision to be rendered would be res ad judicata as to it as well as to the Freeman-Sweet Company, on the questions of validity and infringement, but he objected to having his employer appellant the Reilectolyte Company, made a party defendant to this suit, claiming for it the privilege of not being sued in a jurisdiction of which it was not an inhabitant and in which it had no regular and established place of business.

Specifically counsel xirg-ed that damages claimed for unfair competition could not be adjudicated against it, a citizen of the same state as plaintiff. Thereupon plaintiff specifically disclaimed any recovery against either appellant on this ground, limiting the suit to injunction, damages, and accounting of profit for infringement. But counsel did not thereupon consent to the jurisdiction of the court over this appellant; his objection to its being made a party defendant, as distinguished from a privy remained, and the objection, in our judgment, was valid.

Without its consent, the court was powerless to compel this appellant to submit to an accounting in Illinois, for all infringements committed in the course of its business in Missouri. While as privy it was bound by the decision as to validity and infringement, it had the right to insist that it be not held to account in Illinois as decreed by the court.

The employment of counsel by A. to defend a suit brought against B. alone, and the frank statement of the facts, is in no sense a general appearance by .the employer as a defendant; especially is this so, when, as here, counsel, while conceding the effect upon his employer as a privy specifically objects to having it made a party to the suit. 5. Appellant’s motion for a dismissal of the entire cause because, since the submission of the case on this appeal, the original patent was surrendered and a reissue patent granted, must be denied.

It is unnecessary for us to consider what the effect of a surrender and a reissue not modifying in any manner the claims in suit, but adding another claim, would be, if the suit on the original patent were undetermined or a decree therein were interlocutory in the true sense as to the merits of the patent in controversy; in the case before us, the surrender and reissue were effective only after the entry of the decree determining validity and infringement and granting a permanent injunction; and in National Brake & Electric Co. v. Christenson et al., 258 Fed. 880,- C. C.

A. -, decided April 29, 1919, we held, on full consideration, that such a decree was final in essence, even though interlocutory in time relation. The rights of the parties are determined as of the date of such a decree; a subsequent surrender of the patent does not involve an abandonment of such rights (Mevs v. Conover, 125 U. S. 144, 145, 23 L. Ed. 1008), the recovery on the accounting will not he based upon the surrendered patent, but upon that decree, which itself is based upon a patent in full force at the date of its entry.

All costs in the District Qaurt and in this court will be awarded against appellant Freeman-Sweet Company. The decree as to appellant Breeman-Sweet Company is affirmed; as to appellant the Re-flectolyte Company it is reversed, with costs, with directions to dismiss the suit as against it, and to modify the decree in accordance with the views here expressed. On Motion for Specific Directions in the Matter of Costs and for Cancellation of Bond. PER CURIAM.

The decree granting the injunction against both appellants provided for a stay, if the Refiectolyte Company gave a bond for damages and profits “which it may be finally decided the plaintiff is entitled to recover from either defendant.” 1. While the court never acquired jurisdiction over the Re-fiectolyte Company as a defendant, nevertheless this obligation to give the bond as a condition to granting the stay order as against the Freeman-Sweet Company was entirely proper: by giving the bond, the Refiectolyte Company secured for the Freeman-Sweet Company the desired stay of the injunction.

The fact that the in junctional order was void as against the Refiectolyte Company, and a stay as against it was therefore unnecessary, does not affect the validity of the bond itself. We see no reason for ordering its cancellation or directing reimbursement of the expense involved in obtaining it. 2. The Reflectolyle Company will recover of the Numinous Unit Company only such costs paid by it as were due to its joining in the appeal; costs which were or would have been necessary if the Freeman-Sweet Company had been the sole appellant shall be taxed against the Freeman-Sweet Company.