Baldwin-Lima-Hamilton Corporation and Edward E. Simmons, Jr. v. Tatnall Measuring Systems Company and Budd Company
268 F.2d 395
3rd Cir.
1959
Check Treatment

BALDWIN-LIMA-HAMILTON CORPORATION and Edward E. Simmons, Jr., Plaintiffs-Appellants v. TATNALL MEASURING SYSTEMS COMPANY and Budd Company, Defendants-Appellees.

No. 12846.

United States Court of Appeals Third Circuit.

May 20, 1959.

Rehearing Denied Aug. 5, 1959.

268 F.2d 395

tion whether and when a verdict can and should be relieved against on the ground of excessiveness, are followed, or whether, as appellees seem to think, it is governed by decisions of the federal courts, there is no reasonable basis for the claim that the verdicts are vulnerable to the attacks upon them. It is certainly true, and this court has held in

, a case tried in Florida on a collision accident happening in Iowa, that the suit, being a death action, is governed by the Iowa statute creating the action. It is also true, though, as stated in that case, with many cases cited in support, that a federal appellate court does not undertake to determine whether a verdict is excessive in fact but only whether it is excessive in law. Cf.
,
,
, and
.

When we turn from these cases to the Iowa cases, we find that the only difference between them is that, while the courts of both jurisdictions declare that, in the absence of a showing of passion or prejudice, a verdict will not be set aside for excessiveness unless the amount is so large as to shock the conscience,

, the Iowa Supreme Court does not expressly distinguish excessiveness in fact from excessiveness in law and thus apparently reserves for itself a wider latitude of review.

On the other hand, in

, the court said in substance that the Supreme Court must keep in mind that it is in the province of the jury to determine amounts to be allowed in any particular case and a verdict ought not to be disturbed unless it is so flagrantly excessive as to raise a presumption that it was the result of passion and prejudice, and not of honest judgment. Cf.
.

Finally, as the federal courts have, the Iowa courts have, declared that comparison of verdicts rendered in different cases is not a satisfactory method for determining excessiveness vel non in a particular case and that each case must be determined on its own facts.

Under the facts of this case and in the light of the controlling principles, no showing is made, we think, for setting aside the verdicts for excessiveness.

No error appearing, the judgments are affirmed.

Walter J. Blenko, Pittsburgh, Pa. (Arthur Littleton, Philadelphia, Pa., Walter J. Blenko, Jr., Pittsburgh, Pa., on the brief; Morgan, Lewis & Bockius, Philadelphia, Pa., Edward A. Hathaway, Waltham, Mass., Blenko, Hoopes, Leonard & Buell, Pittsburgh, Pa., of counsel), for plaintiffs-appellants.

Joseph W. Swain, Jr., Philadelphia, Pa. (Dexter N. Shaw, Thomas N. O‘Neill, Jr., Montgomery, McCracken, Walker & Rhoads, John C. Dorfman, Howson & Howson, Philadelphia, Pa., on the brief), for defendants-appellees.

Before MCLAUGHLIN, KALODNER and STALEY, Circuit Judges.

PER CURIAM.

Plaintiff appeals from the finding of misuse of the suit patent.

We agree with the district court that the test body is not an element of the patent which is for a gage per se.

The limitation on use of the gage imposed by appellant, as found by the district court, consists of a flat refusal to sell it to prospective purchasers desirous of using it with strain sensitive apparatus of a type manufactured by Baldwin or its licensees unless the purchase included such apparatus from Baldwin or its licensees. The district court was clearly right in holding: “The enforcement of this policy constituted an illegal expansion of the monopoly conferred by the Simmons patent on the gage per se beyond that contemplated by the patent grant. This misuse is a bar to the enforcement of the patent against the defendants regardless of whether plaintiffs’ activities constituted a violation of the anti-trust laws.”

The judgment of the district court will be affirmed upon the opinion and particularly the supplemental opinion of Judge Steel.

Sur Petition for Rehearing.

Before BIGGS, Chief Judge, and MCLAUGHLIN, KALODNER, STALEY and HASTIE, Circuit Judges.

PER CURIAM.

The petition for rehearing, if anything, makes it clearer than ever that 1. the test body is not an element of the patent, which is for a gage per se, and 2. that appellant Baldwin-Lima-Hamilton Corporation illegally limited the use of the Simmons gage by refusing to sell it by itself to prospective customers who wished to use it with strain sensitive apparatus of a type manufactured by appellant Baldwin-Lima-Hamilton Corporation and its licensees.

The petition for rehearing will be denied.

BIGGS, Chief Judge (dissenting).

The court has extended greatly the patent misuse principle. This extension, applied full force, could prohibit a patentee from employing his invention as a component even in an apparatus of his own manufacture.

I conclude that the test body is a material element in the claimed invention, as the court below first held, and that Section 271, Title 35 U.S.C., may be applicable.

The issues involved are of such far-reaching importance as to render desirable rehearing before the court en banc.

For these reasons I must dissent from the order denying rehearing.