American Sulphite Pulp Co. v. Burgess Sulphite Fibre Co.

PUTNAM, Circuit Judge (orally). I can see no reason why I should not dispose of this case now. I am sure it will be for the convenience of counsel for me to do so; and, so far as the propositions of law are concerned, I have considered every one of them within a very short time, and would gain nothing by investigating the authorities which have been cited. So far as questions of fact are concerned, I am satisfied I should lose more than I would gain by postponing the consideration of them for an investigation of the ■record at some future day., Some reference has been made by the respondents to Westinghouse Air-Brake Co. v. Burton Stock-Car Co. (C. C.) 70 Fed. 619. I always have an unpleasant sense of responsibility with reference to. the granting of a preliminary injunction by a single judge, and I am unwilling to grant one when the settled rules of practice do not absolutely require me to. In that case I could not see that the •complainant’s market was in any way in danger, or anything of substantial value which the complainant would gain by an injunction. Therefore I refused the injunction; and the circuit court of appeals sustained the circuit court, — not on that ground, but on a somewhat different one. 23 C. C. A. 174, 77 Fed. 301. That decision was laid aside in Bresnahan v. Leveler Co., in which the opinion was passed down on June 5, 1900, by the circuit court of appeals (102 Fed. 899), as a very peculiar one; and I cannot, in •view of the expressions of the circuit court of appeals, give it any 'weight here. This application has been spoken of by counsel for the respond.ents as asking for judgment at an early stage of the case. In view ■of the settled practice of the, various circuit courts of appeals, as ;fully recognized in this circuit, it is not asking a judgment; it is asking execution, after a full consideration and adjudication by the circuit court of appeals, although against different parties. The view which I take of the decisions, and of the line of practice as established by the circuit courts of appeals in the various circuits, and especially in this circuit, requires me, against what may be my own personal convictions, to grant an injunction here, so far as nine •digesters are concerned. Much has been said here, and well said, in regard to the question of laches. If this case were one of first impression (that is, one in which the patent had not already- been sustained), the suggestions thus made would be quite conclusive on the application for an injunction. But, where we are called bn to give effect to a prior decision on a patent, after litigation of the conclusive character described in various opinions of the circuit courts of appeals, the position is entirely different, ■ and the equities which usually reach applications for interlocutory injunctions have very little place. The court to which an application is made for an interlocutory injunction, although against new parties, is simply asked'to protect an established right, and not to render a new adjudication. Of course, equities of a special ■ character may arise in any case which the courts cannot disregard. As, for example, one equity in this case is the fact that an injunction granted in. a radical manner, [981] and without proper provision for the protection of the parties, might do the resi>ondents irremediable injury, far beyond any advantage which would come to the complainant. I think, however, the case will be found, before we get through, to so shape itself that there will be no danger on this score. The rules with reference to granting interlocutory injunctions in patent causes have been fully explained in this circuit: in Wilson v. Store-Service Co., 31 C. C. A. 533, 88 Fed. 286, and in Hatch Storage-Battery Co. v. Electric Storage-Battery Co. (C. C. A.) 100 Fed. 975. The practice is now settled in this circuit in patent causes according to the old rules applied in other suits. The right of the complainant must be established by prior litigation or by long acquiescence or beyond doubt. This applies to all the issues; it applies not only to the question of the validity of the patent, but to the question of infringement, as was fully explained in the case last cited. Bo far as the patent at bar is concerned, its validity and construction have hec-n settled by the circuit court of appeals in American Sulphite Pulp Co. v. Howland Falls Pulp Co., 25 C. C. A. 500, 80 Fed. 395, and in such way that L am bound by that case. It is true that all the questions which might be raised, and which perhaps will be raised, on the linal hearing, — among the rest, the validity of the reissue, and the question of anticipation as applied to the patent as construed by the circuit court of appeals, — have not been passed on by that court. Bui they were before the court; they were in (ho record; and the respondent had the right to maintain the decree of the court below on any ground on which it could maintain it, irrespective of the positions taken by the complainant, and irrespective of the coni]) la inant’s assignment of errors. Bo it could have availed itself of every one of iliese defenses, and brought them to the attention of Hie circuit court of appeals, and sought the judgment of that court on them. Therefore the fact that the circuit court of appeals did not pass specifically on certain issues does not relieve me from acting in accordance with its final determination. Otherwise, there would be no end, and, every time it could be suggested that there was some issue on which the circuit court of appeals had not passed, this court, on a new bill between other parties, would be powerless to act. Theoretically, every question which could have been raised in the circuit court of appeals in the prior litigation has been determined by it. Of course, if, as a matter of fact, certain questions were not determined there which may be hereafter determined, it. might be my duty, under some circumstances, to shape the injunction in such way as not to put the parties respondent in a position of urgency until the questions were passed on. But the mere fact that they have not in truth been passed on does not relieve this court from giving effect to the judgment on appeal, nor from giving the complainant relief. The condition here is nol extraordinary, and therefore every question which has been raised here, except that of infringement, I must accept as having been already determined. The new anticipatory matter which has been brought to my attention may, on revision of the case on final hearing in the circuit [982] court of appeals, in connection with like matter in the prior case, be of importance; but it is, to my mind, subject to the saíne criticism as like German publications before me in that case. It is merely suggestive and experimental, and not of that full, frank, and practical character which the decisions of the supreme court require ip anticipatory publications. I do not see in.them, or in the patents which have been brought to my attention, anything of that clear character which would- justify me in avoiding the decision in the. prior suit. A late case in the .circuit court of appeals for this circuit (Bresnahan v. Leveller Co., 39 C. C. A. 508, 99 Fed. 280) holds very emphatically to the rule that new matter, for the purpose-of. avoiding the effect of an earlier judgment, must be of a very substantive character. So I think that, in everything except the question of infringement, I am practically bound by the prior decision. , On the question of infringement, I have no doubt with reference to the digesters 1 to 9. I have no- doubt that the various layers of cement constitute the substance of the lining of those digesters, If, instead of having the layers built up in what Mr. Burgess calls a composite manner (that is, by breaking joints), they were made of a solid mass of cement, it would be at once apparent that there was infringement. To my mind, the building up of these strata or layers by breaking joints is, in the patent law, equivalent to a solid mass, of cement; and the whole structure, I have no • doubt, is the same as that pointed out by the second claim of the patent in suit. I say this without undertaking to hold that the second claim has any validity, because I do not think it has. I refer to it for the purpose- of making clear my view that, in the first nine digesters, the addition of the vitrified brick is purely incidental to a structure consisting of the two elements combined as set out in the first claim of the patent in suit; that is to say, the shell of the digester, and a mass of cement capable of performing the necessary functions of an interior lining. Without undertaking to go at length into the nature of the lining of the tenth digester, and reserving my views about that until a final hearing, all I need say with reference to it is that it involves too much doubt on the question of infringement to justify me in issuing an injunction against it. The points of doubt are: First: Whether, after all, the real substance of this construction is not that described by the respondents as a purely, bona fide, composite lining. If it is a purely, bona fide, composite lining, fairly so termed, it certainly- does not come within the claims of the patent in suit, because the very essence and gist of those claims is that Russell was able to get rid of everything except the shell of the digester and the lining of cement. That is the very pith of his invention. Second. I have doubts whether this digester really shows anything more than is shown by the Pierredon patent, — lava bricks laid, in a heavy course of cement; and what is shown in that patent the public has the right to use, independently of any question whether Pierredon saw all the advantage coming from having a heavy cement course under .his lava bricks. Third. The testimony [983] with reference to the substantial advantages and comparative relations of the various parts of the lining of digester 10 are too conflicting to justify the court in basing an interlocutory injunction upon it. On the whole, it is enough for me to repeat that the question of infringement as to digester 10 is too doubtful-to justify this court in using the power of a temporary injunction with reference to it. The decree which will be entered will be in substance as follows: An injunction to issue against digesters 1 to 9, inclusive, to take effect in three months from the entry of the decree; but, in the event there is an appeal, the injunction to-take effect in three months from the coming down of the mandate. As to digester 10, the decree will stale that an injunction is denied. I name the three-months period because I imagine that will be sufficient to enable the digesters to be relined. If the respondents think three months will not be sufficient, I will enlarge the time.