Asbestos Shingle, Slate & Sheathing Co. v. Asbestos Shingle Co.

ALSCHULER, Circuit Judge (after stating the facts as above). The procedure under equity rule 58, as followed in this case, was sanctioned by this court in Bronk v. Charles H. Scott Co., 211 Fed. 338, 128 C. C. A. 17, where it is said: “If the decree cannot be sustained by an application of the law to the facts admitted by appellant in her bill and in her answers to appellee’s interrogatories, the cause must be remanded for trial in due course. Undoubtedly the purpose of authorizing interrogatories was to enable the court to make a summary disposition of a cause by applying the law to an admitted state of facts; but, when the facts are not admitted, neither that rule nor any other warrants a summary disposition on affidavits or other untested showings .by the party moving for the summary disposition, in lieu of proofs duly taken with proper opportunity for the adversary to cross-examine.” In the instant case no question arises of the validity of the patent in suit. It was the subject of litigation in Asbestos Shingle, Slate & Sheathing Co. v. Rock Fiber Mfg. Co. (D. C.) 217 Fed. 66, where Circuit Judge Baker, sitting in the District Court for the Northern District of Illinois, held it to be an invention “that is broad and meritorious”; and its validity is here conceded. The defense of noninfringement is the only one which this record raises. The bill broadly and aptly charges infringement, and is upon its face entirely sufficient. To dismiss it on motion would be unwarranted, unless from the answers to the interrogatories it so clearly appears that the defendant did not infringe the patent in suit that the court can say that under no admissible evidence which might by any possibility exist can the conclusion of noninfringement be avoided. If it were conceded that the process of the Norton patents and the product of the Norton machines produced through following such process do not and cannot infringe the Hatschek process and product, we are nevertheless first confronted with the inquiry whether from the answers to the interrogatories it does conclusively appear that the alleged infringing process follows exclusively the Norton patents, and that the product is the result solely of the Norton processes. In its first interrogatory defendant asked, in substance, whether by its charge of infringement plaintiffs meant that the infringement consisted in the manufacture according to any of the processes set out in the Norton patent, or in the sale of products of such processes as represented by the specimen filed ánd marked “Defendant’s Exhibit, Defendant’s Product.” To this interrogatory plaintiffs replied: “Yes, and in tbe use of tbe machines described in all of said patents in such, manner and accompanied by such afets as to perform the process and produce the product of the said Hatschek patent in suit.” [542] If what follows the word “yes” were discarded, the answer then might be considered an unequivocal admission by plaintiffs that the alleged infringing process and product followed strictly the Norton patents. But by what right may we disregard this part of the answer? The entire answer is in effect a statement that, while the machines of the Norton patent were used in producing defendant’s product, yet the machines were also used in such manner, accompanied by such acts, that the machines performed .the processes and produced the product of the Hatschek patent. Whether in fact the machines can or cannot be so operated as to produce such result we do not know, and surely the court cannot, of its judicial knowledge, alone determine. Possibly on further application to the court plaintiffs might have been required to amplify their answer by stating the nature 'of the use of the machines, and of the accompanying acts which the answer charges result in the infringement of Hatschek’s patent. But the record discloses no steps to require such further disclosure, and we must consider the answers as we find them, giving effect to each and every part thereof. The answer to the second interrogatory does not afford further light. Plaintiffs are there asked to point out which, if any, of the processes or products of the Norton patents are claimed to infringe the reissued patent in suit, and the answer is, “All of them,” and this answer again asserts infringement, as it is asserted in the first answer after the word “yes.” The third interrogatory was not answered. Prom these answers it cannot be concluded that the general charge of infringement as made in the bill is limited to such infringement, if any, as would arise from a strict following of the teachings of the Norton patents, and by no possibility from a deviation therefrom in such manner as to involve infringement of Hatschek. Under these circumstances there was error in dismissing the bill on motion, and the decree is therefore reversed, with direction to the . District Court to deny the motion to dismiss the bill. Footnotes [1] ©moFor other eases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes