Davey Tree Expert Co. v. Van Billiard

255 F. 781 | 3rd Cir. | 1918

BUFFINGTON, Circuit Judge.

This case is one that challenges a consideration of some matters not discussed at the hearing. The subject involved is what is commonly known as “tree doctoring” by filling up the cavities of decaying trees. The care of trees is a matter of such general importance, and one of the patents involved is of so broad, inclusive a character, that if the inventor has benefited the art in the way he claims, he is entitled to and should have a broad, generic claim to cover his invention. On the other hand, if his invention is not of that character, he should not preclude the public from doing everything it can in the way of the preservation of trees.

The present case was against two former workmen of the plaintiff, and was not defended by strong parties. We do not know, and do not say, that a stronger defense could have been made out than has been, but we are not willing to give, at the present stage of the case, the stamp of approval of the Third Circuit to the validity of the broad, generic claim here involved, unless the record compels us so to do. In making this statement, we express no opinion adverse to the validity of that claim.

[1] Infringement of two patents was charged in the hill filed below. The earlier patent, No. 890,968, issued June 16, 1908, to John Davey and others, was found valid by the court and held infringed by the defendant, and its further use enjoined by the decree. From this decree the defendants have not appealed, and the validity and infringement of that patent arc not before us.

[2] The second patent, No. 958,478, issued May 17, 1910, to Wellington F. Davey, is of a much broader subject-matter, and claim 1 thereof is for the alleged generic feature. The court below found several other claims of the patent valid and infringed, and in its opinion directed the preparation of a decree holding such claims infringed. In that opinion, which is reported at 248 Fed. 718, it further found claim 1, which was the broad general claim, was invalid, and thereupon directed the plaintiff to file a disclaimer thereof in the Patent Office within thirty days. The plaintiff declined to file such disclaimer, and thereupon the court entered a decree dismissing the bill entirely as to patent No. 958,478, which, it will be observed, carried with it the dismissal of those claims of the patent which the court had found valid and infringed. The practical effect of the direction of the court that the plaintiff file a disclaimer would have been to prevent the plaintiff, had he complied with such order, from reviewing the decision of the court below on the validity of his generic claim; and the bill being dismissed as to the other claims of the patent, the defendant has no opportunity to now review the question of the validity and infringement of the claims which the court in its opinion so held valid and infringed.

After due consideration had, we are of opinion the penalty imposed by the court below upon the plaintiff for not filing a disclaimer cannot be justified. Congress, by Rev. St. § 4922 (Comp. St. § 9468), has provided a statutory penalty on a patentee for failure to enter a disclaimer, namely, that unless he does so before he brings suit he cannot recover costs. But Congress has nowhere enacted that a refusal to enter a disclaimer should be punished by a dismissal of a patentee’s bill. Of the plaintiff’s right to review in this court the decree of a District Court adjudging a claim of his patent invalid, there can be no question. But, if the order of the court forcing the plaintiff to file a disclaimer had been followed, it would have resulted in the extinction of the claim, and consequently of the right of the plaintiff to review in this court the question of the validity of such claim which he had been thus forced to disclaim, for it is quite evident that, if the plaintiff once filed his disclaimer, that was the end of his claim, and he never could raise the question of its validity in the court below, in this court on appeal, or in any other jurisdictiqn. The claim simply would not exist. Moreover, the practical effect of the decree below was that, while the opinion of the court held certain claims of the patent valid, dismissal of the bill prevented the defendant contesting the correctness of that conclusion.

In view of these conclusions, it has seemed to us the decree below should be reversed, and the cause remanded for further action in the court below, which, if the court still holds to its opinion, so far as patent No. 958,478 is concerned, would take the form of a decree against the plaintiff, adjudging the first claim of his patent invalid, and against the defendant, holding the other claims valid and infringed. The question of cost would be determined in such a way as the situation warranted in view of Rev. St. § 9468. Such a decree being then entered, there would be a final decree from which the plaintiff could appeal in so far as the bill is dismissed as to the the first claim, and from which the defendant could appeal in so far as the decree sustained the other claims involved in plaintiff’s patent. In this way we would have the whole controversy before us at one hearing, and by that time there might be other developments in other cases involving this patent, which would lead to our having a more complete view of the situation, before this court committed itself to sustaining the validity of the broad first claim of patent No. 958,-478, in case we should reach that conclusion.