# Brief for Respondent — Hazel-Atlas Glass Co. v. Hartford-Empire Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Brief for Respondent
- **Published:** January 1, 1944
- **Citation:** 322 U.S. 238

## Text

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5 Ix THE . *

Supreme Court of the United States

af “OCTOBER TERM, 1943

NO. 398. -

HAZEL-ATLAS GLASS COMPANY, Petitioner,’
. v. at,
HARTFORD-EMPIRE COMPANY, Respondent.

in Writ of Certiorari to the Circuit Court of Appeals
; for the Third Circuit.

° |

acne FOR RESPONDENT, ‘HARTFORD-EMPIRE.
COMPANY. a a ~~

*

: WALTER J. BLENKO,
; Attorney for Respondent.
FRANCIS W: COLE,
EDGAR J. GOODRICH,
JAMES M. CARLISLE,
Of Counsel.
January, 1944.

—
SMITH BROS. CO. INC., LAW PRINTERS 454 498 e e e Fe

Reports of Decisions i
Statement of the Case 2
The proceedings and issues bélow............ 2
The issues in this Court. 3

The opinion of the court below; Hazel’s knowl-
edge of the facts in 1929; Hazel's laches 4

Factual errors in the dissenting opinion below.. 15

‘Inaccurate statements and arguments in
‘Hazel’s brief in matters outside the record 16

First Point. Respondent interposed no objec-
tion in the court below, on procedural
grounds, to petitioner’s original applica-
tion in the court below for leave to file a
bill of review in the District Court, but op-
posed only on the lack of merit in the peti-
tion. N

_ Respondent concedes that it. is petition-
er’s procedural right to file an origina) bill
in a competent court of original jurisdic-
tion to impeach the judgment now stand-
ing against it; but insists that the court
below was without statutory or other au-

*

Subject Index. |

g PAGE
thority to grant the relief 3 * *
tioner.

Petitioner's several contentions in re-
gard to the legal power, and as to the 1
lic interest, are wholly without merit... 22

The court below rightly held that it
had no power to grant the relief
sougſghnt eee ee, 2 4°

Since the term in which the original
1932 judgment was entered had
long since expired, the court be-
low was without power to recall
its mandate, and correctly so held 25

The procedure urged by petitioner is
unwarranted and improper......

The Art Metal cases are not applicable
——WW Serre eee

The dissenting opinion below is er-
„% mwg ä

There is no conflict between the deci- .
sion below and the Throckmorton
and Marshall cases......... ere

The English cases relied on by peti-
tioner are not applicable........

The public interest does not require a
reversal of the judgment below;
it requires that the judgment be-
low be affirmed and that peti-
tioner be held to a procedure
which would protect the — of
both „ ö

Fourth Point. . Petitioner is barred from seek- .

ing the relief for which it petitions, by its
own election to settle its controversy with
respondent and to abide by that settlement

“so long as the settlement was Profitable

to ſttũt .

PAGE
— Point. There was no fraud in the prep-
aration and publication of the Clarke arti-
cle, or in its use by respondent in the Pat-
ent Office or in the Circuit Court of Ap-
peals. The Clarke article was not material
to the decision of the Court of Appeals... 43
The Clarke article was true as pub- —
_ lished, and was so regarded by
respondent's counsel 43
The Clarke article was not material to
the Court of Appeals’ decision in
| the Hazel infringement suit. 47
Third Point. The court below correctly held
that petitioner had made no timely repre-
sentations to that court concerning .the
Clarke article, and that petitioner, because
of its laches, had no standing to seek the
relief for which it petitioned............. 53
The undisputed facts 54
Petitioner's lack of diligence. 1 57
Unjustifiable insinuation as to money -
r 62
Death of key witnesses during period
of Hazel's inactivity....... .

iv | Table of Cases Cited.
: PAGE
Fifth Point. The. court below correctly found
that the alleged fraud did not prevent peti-
tioner from making a full and fair defense. 70

ö Sixth Point. The writ of certiorari should be
_ dismissed because the judgment below was
-based on several grounds, mainly of a fac-

‘tual nature and each sufficient to — of
yo RAE » 5 73

Table of cases Cited ; 3
Adams v. U. S. ex rel. McCann, 317 U.S. 269. 35

Arrowsmith v. Gleason, 129 U.S. 88. =a eee

Art Metal Works, Inc. v. Abraham & Strauss, Inc.,

2 Cir., 107 F. 2d 940; 107 F. 2d 944; 308 U.S.
. 2, 19, 31, 32, 33, 34, 35
Barrow v. Hunton, 99 U.S. 80............ 9 24
Beidler v. Photostat Corp., 310 U.S. 648. 33
Bronson v. Schulten, 104 U.S. 4100 27, 30, 39
Brooke v. Lord Mostyn, 33 Beavan 457 (1864) 38
Brooks v. Railroad Co., 102 U.S. 107............. 27
Brown v. Piper, D me 49
Casey v. Sterling Cider Co., 15 F. 2d 1 28
Cromwell v. County of Sac, 94 U.S. 3511. 47
Dobson v. United States, 31 F. 2d 288. 8 28

Dowagiac Mfg. Co. v. „ — Mfg. Co., 6 Cir., 155
, A. wee

_ Eclipse Machine Co. et al. v. Harley-Davidson Motor
Co. et al.; 3Cir., D 5⁴

Foster Bros. Mfg. Co. Inc. v. National Labor Rela-
tions Board, 90 F. 2d 948. AN ee ae 28

Table of Cases. Cite.
f 7 5 5 PAGE
Gaines v. Fuentes, 92 U.S. 1Ub0UrUĩ̃ 2⁴
General Talking Pictures Corp. v. Western Electric
// 00 4, 75
Guaranty Trust Co. of New York et al. v. Minne-
apolis & St. L. R. Co. et al., 98 F. 2d 345. 29
Hart et al. v. Wiltsee et al., 25 F. 2d 88333. 28
Hartford-Empire Co. v. Nivison-Weiskopf Co., 6 Cir.
—%§«§Ü02' 059s ada ne dareas 3
Hawkins v. Cleveland, C., C. & St. L. Ry. Co., es
SS ee rer ne here 29
Hill, etc. v. Hawes, October Term 1943, No. 4. 26

Homer Brooke Glass Co. and The Owens Bottle Ma-
chine Co. v. Hartford-Fairmont Co., 255 Fed.

901; affirmed 262 Fed. 42ꝶù·.wl . 18, 52
Jackson v. Irving Trust Co., Mess 37
Keller v. Adams-Campbell Co., 264 U. S. 314. 74
Lau Ow Bew v. United States, 144 U.S. 47... 36
Magnum v. Coty, 262 U.S. F 75
Marshall v. Holmes, 141 U. S. 589. 19, 37, 72
M’Clung v. Silliman, 6 Wheat. 598, 5 Curtis 184. 35
nnn 68
Mercoid Corp. v. Mid-Continent Investment Co. et

al., decided Jan. 3, 1944...... WA
Morton Salt Co. v. Suppiger Co., 314 U.S. 488. 40
Nachod et al. v. Engineering & Research Corp., 2

— A A ĩðͤ 28, 33
National Brake & Elec. Co. v. Christensen, 254 U.S. N

PJ%pm; ae eens ee eee eee 54
Nuveen v. Board of Public Instruction, 5 Cir., 88 F.
3J„ECCCCCCCC0C0C ane eae kas besswens 69
Pickford v. Talbot, 225 U.S. . 9 60

Raffold Process Corp. v. Castanea * Co., 3 Cir.,
105 F. 2d 126 VVV 24. 41

vi Tułctable of Cases Cited.

PAGE
Realty Acceptance Corp. v. Montgomery, 51 F. 2d
642; affirmed 284 U.S: 547ũũ 7... 28, 29, 36
Richmond v. Tayleur, 1 Peer Williams 737 (1723). 38, 39
Rorick v. Devon, 307 U. S. 29ù ũ 99999 3
Schneiderman v. United States, 320 U.S. 8 70
Shawkee Mfg. Co. et al. v. Hartford- Empire Co., 137
%%%½0di . cone ea as 1
Sorenson v. Sutherland, 2 Cir., 109 F. 2d 714. 37
Southard v. Russell, 16 How. 547. 2.2
Southern Power Co. v. North Carolina Public Service.
Co., 263 U.S. 508. FCC 75
Sprague v. Ticonic Bank, 307 U.S. 161............ 28
Sundh Electric Co. u. Cutler-Hammer Mfg. Co., 244
Fed. 1638 Per rere ere MOTEL Ty erp er yes 2³
The Alfred Nobel, etc., 87 L. J. P. 1833. 38

Toledo Scale Co. v. Computing Scale Co., 7 Cir., 281
Fed. 488; 261 U.S. 399. 4, 21, 23, 54, 60, 70, 72, 73
' United States v. Johnston, 268 U.S. 220. 75
United States v. Mayer, 235 r 29
United States v. Throckmorton, e :
Pe si A ie BES . 19, 21, 30, 37, 39, 70, 71, 72

2d 240 . F177 rere oe 5
Waskey v. Hammer, 179 Fed. 273. 29
Watts, Watts & Co. Limited v. Unione Austriaca Di hed:
Navagazione, 239 Fed. e 28
Wayne United Gas Co. v. 9 Glass Co.,
— ̃ ꝶ.ÜA.., A 8 2
Wetmore v. Karrick, 205 U.S. 14111. ẽ 27
Wheeler v. McNeil, 8 Cir., 101 Fed. 685. 69
Wnitney v v. Dick, 202 U. S. 132. . 29

Wichita Royalty Co. v. City Nat. Bank of Wichita
. / ͤaA— 8 29

‘Table of Cases Cited. vii

other Citations
Act of June 19, 1934, C. 651, 5 12 8
A. L. I. Restatement, Contracts, Section 484. 68
4 Cyc, of Fed. Proc., Sec. 1159, pp: 342-345. 24, 31. 54
Encyclopedia Brittanica, * Ed., p. 642. 38

—%é⁰—ͥwwww̃̃ůĩÿůÿ 8 27
% 8 „ 29, 36
/ / „ „ . 29, 36
‘Williams. “Federal Practice,” Sec. 7, pp. 67-8. „

IN THE

Supreme Court of the United States

—

2 ae OCTOBER TERM, 1943

NO. 3 398.

HAZEL-ATLAS GLASS COMPANY, Petitioner,
; * 8 V. f . .
HARTFORD-EMPIRE COMPANY, Respondent.

On Writ of Certiorari tc he Circuit Court of Appeals

for the Third Circuit.

BRIEF FOR RESPONDENT, HARTFORD-EMPIRE
COMPANY. y

1
Ofncial Reports of Decisions

„The decision of the court below is reported at 137

F. 2d 764 and appears at page 216 of the Record. That

decision disposed not only of this case, but also a com-
panion one, Shawkee Manufacturing Company et al.,
petitioners, v. Hartford-Empire Company, in which cer-

8 — has also been granted, No. 423 at this Term.

The earlier decision of the Circuit Court of Appeals.
upon which was based the judgment sought to be re-
opened by the present proceeding, appears at 59 F. 2d

399. That opinion was filed May 5, 1932 and —

was entered on the same day.

~~
Counter - Statement of the Case.
For brevity, petitioner will be referred to in this
counter-statement as “Hazel”, respondent as “Hartford”,
the earlier litigation reported at 59 F. 2d 399 as “the

Hazel infringement suit”, and the petitioners at No. 423
as “Shawkee”’.

The proceedings and issues below

On November 19, 1941 Hazel filed a petition in the
Court of Appeals for leave to file a bill of review in the
District Court; annexing its proposed bill of review to
the petition (R. 5, 6). The bill of review alleged that
new and materiai facts had appeared which could not
have been known with reasonable diligence. Hartford
maintained by counter affidavits (R. 49-145) that -the
alleged facts were not new and that certain of them were
not facts.

On December 29, 1941 the Court of Appeals ruled
that the gist of the petition was in the charge of fraud
on that court (R. 147) and denied the petition but
granted leave to amend its prayers so as to petition the
Court of Appeals to set aside its 1932 judgment on the
ground of fraud, the court stating that it would adopt
the practice followed in the Second Circuit in the Art
Metal cases, 107 F. 2d 940; 107 F. 2d 944 (R. 148
on January 6, 1942 Hazel filed an amendment to its
petition (R. 149) which in substance was a motion to
set aside the judgment in the Hazel infringement suit.
which the Court\of Appeals had entered in 1932, on the
ground of fraud, and for a rehearing therein. Alterna-
tively, Hazel prayed for leave to take proceedings in the

—3—

District Court for setting aside and vacating the final
On February 3, 1942 Hartford filed its reply to the
amended petition. (R. 155). This reply contains the
history of the Clarke article in reasonably compact form
with a statement of the reasons why there was no fraud
and why the evidence referred to in the proposed bill
pf review was not newly discovered; also statements as.
to Hazel’s election to settle the case and disregard the
substance of the so-called “newly discovered evidence”
and a statement in regard to Hazel’s laches. .

Subsequently in its brief Hartford raised the ques-
tion as to whether the Court of Appeals had the power
to recall its mandate, vacate its judgment and rehear
the case after the close of the term, about ten years
defore, at which the final judgment was rendered. To
this question the answer must be in the negative, fraud
or no fraud, because a Circuit Court of Appeals loses all
jurisdiction of a case at the close of the term in which
its judgment is entered, unless the jurisdiction. be re-
served, which was not done in the Hazel infringement
suit. The case at bar offers no ground for making an
exception to that rule.

The issues in this Court

The record before this Court is limited to the
above-mentioned petition and the. proceedings thereon.
Hazel’s brief herein undertakes to present many matters
from the Hazel infringement suit, and to refer to the
proceedings therein, although the record in the Hazel
infringement ‘suit is not before this Court. We shall

proceed in this brief upon the assumption that the only

‘matters to be here considered are those raised by the
petition for certiorari. Rorick v. Devon, 307 U. S. 299,

—

— :

303; Genéral Talking Pittures Corp. v. Western Electric
Co,,804 U. S. 175, 179. The merits of the patent infringe.
ment suit are not involved here, for obvious jurisdic-
tional reasons. Toledo Scale Co. v. i aia Scale Co.,
261 U. S. 399, 417-8.
t
The 33 of the court below; Hazel’s N .
knowledge of the facts in 1929; Hazel’s laches

The opinion of the Court. of Appeals (R. 216) was
filed June 30, 1943. It was written by Judge Joxxs,
Judge MArRIs concurring, Judge Biccs dissenting. Con-
currently an order was entered denying the petition (R.
242). The opinion covers five main points, as follows:

(1) f
The court found the fact to be that the Ciarke ar-
ticle was not material to the 1932 decision in the Hazel
infringement suit, because: .
i (a) In the Hazel-infringement suit, the Peiler pat-
ent in suit was held by the Court of Appeals (one judge
dissehting) to be valid and infringed by the Hazel glass
feeders; 59 F. 2d 399 (Opinion herein R. 217.) While
the Clarkę artiele was quoted and discussed in the Court
of Appeals' opinion in the Hazel infringement suit, yet.
Wholly apart” from it, the majority of the Court, of
Appeals l .
“upon turning to ‘the — 7 drew their own con-
' clusions in support of the action which the court
- thereupon took. what was held in the

* The District Court had held the patent not in-
fringed but had not questioned its validity; 39 F. 2d 111.
, + Emphasis in quotations is ours throughout this
brief, unless otherwise noted. ; 4

17

Hazel-Atlas case was the court’s independent judg-
ment, regardless of the Clarke article. In
the situation shown, it is not possible for us to say
that the Clarke article was so basic to this court's

_ decision in the Hazel-Atlas case that, upon the
showing of fraud in the article’s authorship, we
would be/ justified in setting aside the orders in the
Hazel-Atlas and Shawkee cases Opinion
herein, R. 224)

The words 'the proofs“ which we have italicized in
the foregoing quotation are from the 1932 opinion of the
Court of Appeals in the Hazel infringement suit. That
opinion, after discussing the Clarke article, proceeds:
“We turn to the proofs for the steps leading up to this
development“. 59 F. 2d 404. There follows, in that opin-
ion, an elaborate discussion of the evidence, references to
the opinions of other courts and a discussion of the ap-
plicable'principles of law.

7

(b) The charge of fraud goes merely to the author- ö
- ship of the Clarke article, not to its substance, which was
unchallenged prior to the proceedings before this.Court:
“No substantial complaint has yet been made that
what the article contained in materia! part, namely,
the ascendency of gob-feeders over ‘stream feeders,
’ . was factually false.“ (Opinion, R. 223,.224).

Even now, Hazel does not challenge the correctness of
‘the article in this respect. .

(c) In 1933, while the Court of Appeals had the
Shawkee appeal under: consideration, facts as to the
origin of the Clarke article were brought to the atten-
tion of the Court of Appeals by counsel for Shawkee.
As to that, the instant — below says:

willie

. “There can be no doubt that the matter received the

attention of all of the members of the court which

had heard the Shawkeo, as well as the Hassl-Aties
case.” ~ (Optaten, R. 223).

ee 22 eee m Wi ibn un tmn
the court’s independent judgment, regardless of the
Clarke article. That this is so is further confirmed
by the fact that Judge Woolley, who had dissented
sharply in the Hazel-Atlas case, separately con-
curred in the court’s order in the Shawkee case,
stating that he regarded himself as bound by the
court’s decision in the Hazel-Atlas cage. And that
was after the matter of the Clarke article had been
brought to the court's attention by the Barnett
correspondence while the Shawigee appeal, which
had been lately argued, was still under advisement.”

(Opinion, —

(2)

The Court of Appeals found the fact to be that
Hazel had full knowledge of the situation, even during
the trial of the Hazel infringement suit in 1929.

Not possibly can the information as to the facts
attending the publication of the Clarke article be
deemed to rate as after-discovered evidence so far
as either Hazel-Atlas or Shawkee is concerned.”
(Opinion, R. 223).

Counsel for Haze! “were aware at least by the time
of the trial” of the Hazel infringement suit in April
1929 of the facts as to the authorship of the Clarke
article (Opinion, R. 219). Both Clarké and Hatch had
freely stated the facts in September, 1926 and February,

. a ; —7—

1928, respectively, and these admissions were imparted
to counsel for Haze] at the time of the trial at Pitts-
burgh in 1929 (Opinion, R. 219-220; see the affidavit
of Edmund P. Wood, Esq., “whom sides accredit”,
R. 487-190, ant Wood's letter to Belknap of November ;
14, 1933, R. 145-146).

(3)

The Court of Appeals held that Hazel had not been
timely in its representations to the court concerning the |
Clarke article. It found that Hazel, well knowing the
facts, deliberately withheld them from both the District
Court and the Court of Appeals because Haze] deemed
it advantageous to do so. Consequently, the court held
that Hazel had been so derelict that it had no standing
to seek the relief for which it petitioned.

“Counsel for Hazel-Atlas were aware at least by
the time of the trial of their case in April, 1929 that
Hatch was the author of the Clarke article. Al-
though then so informed, counsel for Hazel-Atlas
deliberately chose not to go into the matter of the
article’s real authorship, ng that if they should
refer to the article (which Was not in evidence),
they might thereby call attention to the. statements

therein contained as to the increased production

from gob feeders as compared with stream feeders,
which could not be successfully refuted. (See affi-
davit of Edmund P. Wood, Esgq., of Cincinnati, whom

both sides.accredit).” (Opinion, R. 219).

As appears from that affidavit (R. 189), the then
. appraisal of the situation by Hazel's counsel was that
inasmuch as the facts as to the widespread commercial
use and success of the Hartford feederg were “freely,

' Hazel obtained affidavits entitled in that appeal (R. 26,

sallow

admitted by everyone concerned in the suit and could not
de successfully controverted”, an attack on the article
might be a boomerang. 7

When the briefs were filed in the Court of Appeals,
Hazel’s counsel still refrained from challenging the ar-
ticle except to criticize a chart appended: to it on the
ground that it was “misleading” and “not competent
evidence” against Hazel (Opinion, R. 220).

Immediately after the 1932 decision of the Court of
Appeals in the Hazel infringement suit, counsel for

29) and setting forth the facts as to the authorship of
the article (Opinion, R. 220). These affidavits, however,
were not brought to the attention of the Court of Ap-
peals, nor was any other timely representation made to
it concerning the Clarke article (Opinion, R. 220-221).
No petition for rehearing, based on this or any other
ground, was filed, despite five extensions of time. Within
the time allowe d by the last extension, Hazel entered
into a eross- licensing agreement with Hartford (Opin-
ion, R. 221).* :
“In short, Hazel- Atlas made no timely representa-
tions to this court concerning the Clarke article”
(Opinion, R. 221).

‘Hazel does not assert that it did anything between
the middle of 1932 and the time it filed its original peti-

Although that agreement contains a provision
giving Hazel the right to cancel at any time R. 161
Hazel has never cancelled or renounced. it. The agree-
ment proved immensely profitable to Hazel R. 152
until May, 1941 when, because of an impounding order
entered in the Toledo anti-trust case, it became unprofit-
able. It was not until some months thereafter that Hazel
filed its first petition herein (Opinion; R. 221).

*

tion herein, in October 1941, by way of attempt to ascer-
tain or prove the facts of which it ‘toncedes it was at
least on notice (Br. p. 22; R. 11). So far as appears, it
was quiescent for the entire period.

(4)

ne Court of Appeals found the fact to be that
Hazel had not been prevented from making a full and
fair defense (Opinion, R. 224, 225).

(5)

The Court of Appeals held as a matter of law that
it had no power to vacate or set aside the decree of the
District.Court, or to recall its mandate to that court.

_ “So. far we have considered this matter on the
merit of the petitioners’ allegations and their stand-
ing to seek the relief for which they petition; and
we conclude against them on both grounds. But,
even had our conclusions in such regard been other-
wise, we would still find ourselves confronted with
a lack of power to vacate or set aside the decrees
of the District Court, which reside therein unaf-
fected by any retention of jurisdiction in this court.

“Following the disposition of the appeals in the
Hazel-Atlas and Shawkee cases whereby this court
acquired the only jurisdiction it ever had over the
decrees in those cases, appropriate mandates duly
issued and the terms. at which the final orders on

the appeals were entered expired long prior to the-
filing of the instant petitions without action having
been taken to extend this court’s grasp.- In that
situation there is nothing from which the jurisdic-
tion of this court can be deemed to have been con-

3

tinued. This rule applies with full vigor to a Circuit
Court of Appeals. See Nachod et al. v. Engineer-
ing & Research Corporation, 108 F. 2d 594
(C. C. A. 2), where the Court of Appeals said. Our
term having expired since the mandate went down,
we have no power to recall it’ (citing cases). And
without a recall of the mandate we ure powerless to
control or affect the decrees in the District Court
which the petitioners now ask us to vacate and set
aside.” (Opinion, R. 225).

“We are without power to affect a final decree of
a District Court except in the exercise of our appel-
late jurisdiction and, once our mandate, based upon
an order of a competently constituted court, goes
down, our control over the decree below entered
pursuant to the mandate comes to an end unless the
mandate be recalled or action otherwise be taken
within term time to extend our jertedietion. ” (Opin-
ion, R. 226.

The Clarke Article 1

The Clarke article was true. Indeed, counsel for
Hazel realized its truth; it was on this account that they
decided, during the trial of the Hazel infringement suit,
not to attack its authorship (R. 189). Moreover, its
truth is attested by affidavits of Clarke (R. 89), Maloney
- (R. 90), — (R. 92), Hatch (R. 63) and Brown R.
53). N

The article was first drafted by Hatch, an cients

of Hartford. The source materials for the article were

principally the Proceedings of the Bottle Blowers’ Asso-

os ciation, but also included a publication of the U. 8.

Department of Labor and other government publications

—11—

(R. 60). Since Hatch expected from the beginning that

the article, which dealt with the impact upon labor of the

introduction of automatic glass-making machinery,

would. be submitted to a responsible union official, to be

checked, revised and sponsored by him (R. 60, 103, 105),
his original draft included statements appearing in the

Union Proceedings, even though Hatch: deemed those

statements wrong (R. 62).* But those errors were cor

rected, and prior to the publication of the article in July,

1926, it was redrafted, the chart was amended, and all
errors which were dependent upon facts capable of being

made more nearly exact were corrected before the final

draft which was: ‘published was made” (R. 62).

After the first drafts of the article had been pre-
pared and revised by Hatch and others, it was submitted
to Clarke, who gor checked and „ it (R.
645, 105, 109, 110, 141).

Clarke's verification of the article was painstaking.
He required Hatch to give him proof of all parts on
which he lacked sufficient information to vouch for · tlie
statements. He struck out the last page, because it was
g unsatisfactory to him (R. 64).

Clarke, having thus aptished himself of the accuracy
of the article, submitted it to Maloney, President of the
Glass Bottle Blowers’ Association (R. 108-9). In re-
gard to it, Maloney wrote Clarke on July 7, 1926 a
109), saying:

J have read this paper carefully this 1 morning
which was the first opportunity I have had to do so
and I find nothing in it that we can take any excep-

This is the basis of Hazel’s unjustified innuendo |
(Br. p. 8) that the ariicle as published was sari and
intentionally t 80. ;

3 g .

—

tions to. In fact, it ‘seems to be a very fair review
of the changes that have occurred in the glass bottle
industry in the last few years as far as automatic
machinery is concerned and the attitude we have
always -taken relative to new methods of pro
duction.”

This letter was wale ostor to any ee over
the authenticity or the accuracy of the article.

Only after the accuracy of the article had thus been
fully confirmed did Clarke adopt it as his own, sign it,
and release it for publication (R. 63-4; 110). The article
thus became Clarke’s article. Hartford's attorneys so
regarded it, and believed it to be true (R. 54, 56, 72, 92).

Hazel asserts (Br. pp. 10-11) that “it was not Clarke
who used the expression ‘gob feeders’, but the Hartford
patent attorneys, who needed this expression for their
Patent Office arguments”. Hazel's assertion is essen-
tially misleading, for the Union Proceedings of 1923,
although not using the term “gob feeders”, did speak of
“the gob process of dropping glass into a mould” (R.
207), and the Clarke article was entirely accurate in
saying (R. 132) that “This new feeder was what is
now known as the gob feeder * * .

‘Under the second point of our argument (pp. 50-2
infra) we shall outline in detail the various items of
proof and the decisions of other courts dealt with at
length in the opinion of the Court of Appeais in the Hazel
infringement suit, and shall show that the Clarke article
was only incidental to that decision. At this point we.
respectfully suggest that a reading of the Clarke article
(R. 167-176), of the only statement in Hartford's brief
regarding it (R. 176-7), and of the only statement in

_.

Hazel’s brief in reply (R. 177-8), will show that the
charges of falsity sprinkled throughout petitioner’s brief
are not justified and that the Clarke article has been
magnified out of: all proportion by petitioner. 7

___. In discussing the preparation of the Clarke article,
Hazel’s brief, pages 7-8, completely misapplies the
letter from Brown of Hartford to Carter of Owens (R.
40) suggesting that Carter write an article. The sug-
gestion was immediately declined by Carter (R. 94), and
this correspondence had no connection whatever with
Hatch’s subsequent compilation of the article later
adopted and signed by Clarke (R. 52, 61, 69). The Clarke
article was drawn as an historical statement, of news in-
terest in the trade (R. 89,59). It said nothing about the
validity or infringement of any — or the priority of

any inventor over others. :

_ Hazel’s innuendo that the Clarke article dent

about the allowance of the Peiler patent is unsupported
by the record and untrue in fact (p. 16 infra). It was
filed in the Patent Office with a number of affidavits and

other publications (R. 53). While not sworn to by Clarke

for filing in the Patent Office,“ it was deemed by the
patent solicitors to be true (R. 53, 92). So filed, it be-
came part of the “file wrapper” of the Peiler application,
which file wrapper ultimately was offered in evidence
during the trial of the Hazel infringement suit.

It was when the file wrapper. was put in evidence,
during the trial of the Hazel infringement suit, that the
counsel for Hazel conferred and decided to make no point
of the a Hatch and not Clarke had originally

—

= Subsequently Clarke executed an affidavit verify-
ng I article in all respects (R. 89), as did Maloney
( „ —

| —14—
drafted the article. The discussion turned on the distine-
tion between “origin and substance” and Hazel’s counsel:

concluded that as the substance was true any attack on |
the article might prove to be a boomerang (R. 189).

Thereafter, the article and the chart appended to it
were referred to in the brief which Hartford filed in the
Circuit Court of Appeals (R. 176-177). The reference
was solely in connection with an argument that the in-
vention of the Peiler patent in suit “broke the Owens
domination”, in support of which the cited proof was
that the Owens Company had itself become a licensee of
- Hartford’s s plunger feeders and was using them in dif-

- ferent plants (R. 177).

Hartford's brief did not quote or 1 upon any of
the parts of the Clarke article quoted in the opinion of
the Court of Appeals in the Hazel infringement suit (R.
177). s

The Hazel brief did not 4 atte the authorship of
the article, nor its truth. It criticized the chart i in some
respects and said:

This chart, like other matters relied upon n by
plaintiff, such as a German book of 1926 (Piff’s.
brief, p. 20) is met competent evidence against the
defendant, being merely part of ex parte statements
made in plaintiff's behalf during the Patent Office
prodeedings (R. 178):

Nor did the Hazel brief challenge the basic proposi-
tion that the Peiler feeder broke the Owens domina-
tion“, for which proposition alone, as we have stated,
was any reference whatever made to the Clarke article in

Hartford's brief (R. 177-8).

5 9
/

: 7

—

Factual errors in the
dissenting opinion below

The dissenting opinion below contains several im-
portant factual errors upon which that opinion is evi-
dently based:

(1) It states (R. 235) that devices such as
Peiler’s” are not referred to in the Union Proceedings
and that this was the heart and essence of the fraud“;
whereas the Union Proceedings, as excerpted in the ree-
ord (R. 207, 212-215), do refer repeatedly to both Hart-
ford devices and similar devices built by others, all of
which, as Hartford urged on the court in the Hazel in-
fringement suit, stemmed from Peiler’ > invention.

(2) It states (R. 237) that Clarke asked Hartford
for money about May 20, 1932 and was paid shortly
thereafter; whereas the fact is that no money payment
was asked for, suggested or made until after the Hazel-
Hartford settlement in July, 1932 (infra, pp. 62-6).

(3) It states (R. 233) that the court below in 1932
thought that the Clarke article represented the opinion
of members of a labor union, as if this were untrue;
whereas the article did in fact represent the union opin-
ion (R. 89-90, 109-110, 195-215) and did little more than
condense that opinion from the voluminous records of
the official printed Union Proceedings (See „
tables R. 195-209

(4) It states (R. 234) that Hatch had “a deliberate
intention to avoid truthfulness” in drafting the Clarke’ .
article; whereas the fact is that although the first draft
of the article repeated some errors in the Union Pro-

ee —

ceedings (see pp. 10-11 supra), those errors (which were
purely statistical) were corrected before the article was
adopted by Clarke and published (R. 62-63; p. 11 supra). 4

ie particulars as to these factual errors in the
Sissenting opinion are given on pages 34-36 of respond -

ent’s brief peers the petition for certiorari herein.

Inaccurate statements and arguments
in Hazel’s brief in matters
outside the record

Hazel’s brief is replete with statements and argu-
ments wholly outside the record before this Court.
Those statements and arguments, apparently intended to
create atmosphere“, cannot be permitted to go unchal-
lenged. In the circumstances, we feel justified in stating
our disagreement therewith, and commenting—not as
the basis for any argument of our own, but solely for the
purpose of holding the case . its proper compass
Quas follows:

(1) Hazel’s comments on erécesdings in the.Patent
Office (Hazel Br., pp. 7, 9-10, 11-12: The file wrapper is
not in this record. Contrary to the implications of the
Hazel brief, that the Clarke article procured the allow-
ance of the Peiler patent, the facts are that the Peiler
application was rejected three times by the Patent Office
after a copy of the Clarke article was filed in October,
1926, twice by the Primary Examiner and once by the
Board = — The Peiler application a allow ed,

de See the opinion of the District Court in the Hazel
infringement suit, 39 F. 2d 111-117, 7 on page 7 0
. Shawkee’s brief at No. 423.

°

a

not because of the Clarke artiele, but on proof of Peiler’s
priority over a Howard patent. The Clarke article was
never so much as mentioned in any decision or other
action by the Patent Office. on

I) Hazel’s re-argument of the Hazel infringement
suit (Hazel Br., pp.-12-16). The record in the Hazel
infringement suit is not a part of the record before this
Court: Nevertheless, Hazel’s brief re-argues many
points debated in that suit, decided against Hazel
and not referred to in the Clarke article, such as the
disclosures of prior art patents, the date when Hartford
first put plunger feeders on the market, etc. Since the
present proceedings. do not require consideration of
those matters and the record on them is not in this
Court for review, the many factual errors in this portion
of petitioner’s brief will not be discussed in detail here.,
It will perhaps suffice to call attention to the statements
Hazel Br., p. 15) that “It was not until 1922 that
Hartford first installed. one of these [Peiler plunger]
.. feeders, according to its own testimony * and
that the plunger feeders of others “were in wide use
years before the Hartford feeders”; whieh statements
are contrary to the decision of the Court of Appeals, 59
F. 2d 399, 408. 412.“

3) Hazel’s assertion as to “the gist of the claim”
of the Peiler application (Hazel Br., p. 19) : Hazel errone-
ously asserts that the “gist” of the claim in Peiler’s ap- .

* p. 412 states, “when the application for the Peiler
patent was filed, Peiler’s plunger feeder had been in
commercial use at Fairmont for over a year.“ The appli- .

cation was filed May 5, 1919, 39 F. 2d 111, 117. Thus the
Court of Appeals found that Peiler had a commercial use
four years prior to the date stated in petitioner’s brief.

* .
plication is expressed in words quoted by Judge Burrine-.
rod from the Clarke article, to the effect that the new

feeders cut off a suspended gob which was preformed or
shaped during suspension.“ The Peiler patent is not in
ite this record, but it will suffice here to refer to the opin-
: ion of the District Court in the Hazel infringement suit,
39 F. 2d 111, 112-3, where six claims are quoted, to show ©
that Hazel’s assertion is ill-founded, and that the claims

require a particular way of shaping. Cf. the opinion of

the Court of Appeals, 59 F. 2d 399, 413.

,
m oe
Summary of Argument
„

Respondent interpdsed no objection in the court
below, ‘on procedural grounds, to petitioner's original
application in the court below for leave to file a bill of

review in the District Court, but opposed only on the

lack of merit in the petition. Petitioner now has the

_ procedural right to file an original bill in a competent

court of original jurisdiction to impeach the judgment

now standing against it. Petitioner is asking this Court

to prescribe an improper procedure for this case, which

is unnecessary. There is a proper procedure open to peti-

tioner, as the court below pointed out, whereby petitioner
can obtain relief if any is warranted by the facts. a

The court rightly held that it was without statutory

authorivy to grant the relief sought by petitioner. If

* As a matter of fact, the broad language which
Judge BUFFINGTON quoted from the Clarke article—not
limited to any particular way of shaping—applies to the
early Hartford paddle feeder. Homer Brooke Glass Co.
v. Hartford-Fairmont Co., 255 Fed. 901, 904. |

—— —

the petitian be regarded as a part of the original Hazel
_ infringement suit, the Court of Appeals had lost all
jurisdiction\ by. the expiration of the term in which its
1932 ee rat was entered. If the petition be regarded
as an ori bill to impeach the 1932 judgment of the
Court of Appeals, the court had no jurisdiction because
At is a court of appellate jurisdiction only.

The Art Metal cases in the Second Circuit are not
applicable here, as the court below correctly held. The
Second Circuit, as well as the other Circuit Courts of
Appeals, follows the general rule, ‘established by many
decisions of this Court, that the power of a Court of
Appeals over its final judgment, rendered by a compe-
tently constituted court, expires with the expifation of
the term.in which the judgment is entered, unless steps
-are taken during that term to continue the court's
" “Jurisdiction. The limitation is not merely one of judi-
eial prynouncement, so far as the Circuit Courts of
Appeals are concerned; but is imposed by statute.

The dissenting opinion below is erroneous in con-
sidering that analogy exists between the present case
and the Art Metal cases, and in holding that a Court of
Appeals: can act as a nisi prius court which disregards
the controlling decisions of this Court.

— There is no conflict between the judgment below
— and the decisions of this Court in United States v.
Throckmorton, 98 U.S. 61, and Marshall v. Holmes, 141
U.S. 589, both of which dealt with original bills brought
_ in courts of original jurisdiction.

The English cases cited by petitioner are not appli-

e here.

The public interest does not require reversal of the

judgment below.. On the contrary, the public intérest

4
.

— — . < 2

6 Ce Ea

" petitioner be held to a procedure by original bill which

would protect the rights of both parties.
N * (2) .

There was no fraud in the preparation and pubii-
cation of the Clarke article, or in its use by respondent

in the Patent Office, or in the reference which respondent

made to it in its 1931 brief before the Circuit Court of,
Appeals. The Clarke article was true. Clarke checked
the article for accuracy, adopted it as his own, signed
it, arid sponsored its publication. Consequently, it was
Clarke’s own article when it was published, and it was

50 considered by respondent's counsel in good faith.

The Clarke article was not material to the 1932 decision
of the court below, W
held.

(3) -

The court below correctly held that petitioner had
made no timely representations to that court concerning
the Clarke article, notwithstanding petitioner's knowl-
edge of the- initial authorship of the article; and that-
petitioner, because of its laches, had no standing to seek
the relief for which it petitioned. There is no merit jp
petitioner's contention that respondent hampered peti
tioner’s investigation of the Clarke article.

Petitioner’s inaction has deprived respondent of the
testimony of at least three important witnesses, now

*dead, and therefore amounted to laches as well as lack

of —
(4)

.

which it petitions, by its own election to settle its con-

troversy with respondent and to abide by that settle
J ; \ = :

ment so long as the settlement was profitable to it.
Petitioner did not disclose its knowledge of the genesis
al the Clarke article either to the District Court in 1929,
fearing that controversy over the article would empha-
size its truth, or to the Court of Appeals in 1932 when
it elected to enter into a cross-licensing agreement with
* yespondent which settled the infringement controversy
between thé parties, and which resulted in large profits
to respondent. Petitioner, having for years elected to
stand upon the judgment of the court below and to affirm
.the settlement agreement, is not entitled to change its,
mind and now belatedly seek relief. ae
6) | 3 7
The court below correctly found that the alleged
fraud did not prevent petitioner from making a full and
fair defense. There was a full adversary trial of the
Hazel infringement suit. Petitioner nowhere contends
that respondent prevented it from presenting every pos,
sible defense. including all pertinent prior art and all
proof as to the practicability of that art. Petitioner's
failure to present to the courts below its knowledge as
to the genesis of the Clarke article was by its own choice
and not through any act of respondent. Petitioner is
now merely seeking reargument of issues already thor-
oughly litigated. United States v. Throckmorton, 98 U.S.
61; Toledo Scale Co. v. Computing Scale Co., 261 US.
399.

: 8 (6)

The writ of certiorari should be dismissed because
the judgment below was based on several grounds,
‘mainly of a factual nature and each sũfficient to dispose
of the case. This Court has dismissed writs of certiorari .
in such circumstances.

IV.
ARGUMENT
‘ | -First Point

Respondent interposed no objection in the court
below, on: procedural grounds, to petitioner’s original
application in the court below for leave to file a bill of
review in the District Court, but opposed — on the
lack of merit in the petition.

" Respondent concedes that it is Sitka S pro-
cedural right to file an original bill in a competent court
of original jurisdiction to impeach the judgment now
standing against it, but insists that the court below was
without statutory or other authority ‘to grant the relief
sought by petitioner.

Petitioner’s several contentions in regard to the
legal power, and as to the — interest, are wholly
without merit.

We wish to emphasize at the outset that respondent
does not deny, and never has denied, that petitioner had,
and still has, a sound procedure available to it whereby -
to apply for relief from the judgment standing against ;
it, however ill-founded its claims.

Petitioner began these proceedings by asking the
Court of Appeals for-leave to file a bill of review in the
District Court (R. 6), a procedure. authorized by
Southard v. Russell, 16 How. 547, 570. Respondent op-
posed on the merits of the application, but did not inter-
pose any ob,ection whatever on procedural- grounds.

The Court of Appeals denied-the petition as ‘origi-
nally framed, but gave petitioner leave to amend its
prayers, stating that the Court of Appeals would “itself
pass upon the question of whether the mandates of this
court should be recalled and the cases reopened” (R.
148). This procedure respondent did and does oppose.
It was wholly beyond the power of the Court of Appeals
to recall its mandate after the close of the term at which
the mandate was entered, or to transform itself into a
nisi prius trial court, as this Court has repeatedly held
and as the majority of the court below upon reflection
realized (R. 225-226) ..

The amended petition included a prayer for leave to
take proceedings in the District Court to attack the
judgment of that court (R. 149-150), thus in effect re-
newing the prayer of the original petition for leave to
file a bill of review (R. 6): The Court of Appeals held,
on the merits of petitioner’ s showing (R. 225): |
“So far we have considered this matter on the
merit of the petitioners’ allegations and their.stand-
ing to seek the relief for which they petition; and
we conclude against them on both grounds.“ :

and denied the petition (R. 242), thus denying the
prayer for leave to proceed in the District Court by way
of a bill of review, for lack of a sufficient showing of
“newly discovered evidence”.

. This action was in accord with the decisions of this
Court, e.g., Southard v. Russell, 16 How. 547, 568, hold-
ing that newly discovered evidence is not sufficient to
warrant a bill of review when it is merely cumulative,
but that it “must be different, and of a very decided and
controlling character”; and Toledo Scale Co. v. Comput- |

*

ing Scale Co., 261 U.S. 390, 421, holding that applicants
must be diligent in their search for and presentation of
newly discovered evidence.

Notwithstanding the strict ‘odin 4 the cases just
cited, the court below has been more liberal in granting
to defeated litigants its permission to review their con-
troversies by means of bills of review. Raffold Process
Corp. v. Castanea Paper Co., 3 Cir., 105 F. 2d 126, 129.
The court below evidently concluded that petitioner had
not even made out a prima facie case (p. 23 supra, p. 41
infra). ;

| However, even now petitioner is entitled, if it
chooses, to file [an] original bill to impeach the decree
now standing against” it. As pointed out by the court
below (R. 226), that is the recognized procedure for
attacking a final judgment on the ground of fraud after
the expiration of the term of its entry. It is a procedure
which is fair to both parties, in that it permits of the
examination and cross-examination of witnesses and
preserves the right of appeal to a duly constituted ap-
pellate court. Gaines v. Fuentes, 92 U.S. 10; Barrow v.
Hunton, 99 U.S. 80; Arrowsmith v. Gleason, 129 U.S. 86;
Dowagiac Mfg. Co. v. McSherry Mfg. Co., 6 Cir., 155
Fed. 524; 4 Cyc. of Fed. Proc., Sec. 1159, pp. 342, 344,
345. ö .

In brief, then, our position here is: while we deny
that the facts warrant the ultimate granting of any.
relief to petitioner, and while we deny that the legal pro-
~ cedure sought by petitioner to be approved by this Court
is lawful or sound, we freely concede that petitioner has
a long-established course of legal procedure open where-
by petitioner may obtain relief if entitled to it.

— a

The court below rightly held that it had
no power to grant the relief sought.

If the petition be regarded as a part of the original
Hazel infringement suit, the Court of Appeals had lost
all jurisdiction. by the expiration of the term in which
its 1932 judgment was entered. If the petition be re-
garded as an original bill to impedch the 1932 judgment
of the Court of Appeals, that court had no jurisdiction .
because it is a court of appellate jurisdiction only. We

shall discuss these propositions in order. :

Since the term in which the original 1932
judgment was entered had long since expired,
the court below was without power to recall
its mandate, and correctly so held.

The mandate of the Court of Appeals in the Hazel
infringement suit issued in 1932. Further jurisdiction
over the case by the Court of Appeals was not reserved
in any way. The term in which that mandate issued
expired. Thereupon, long prior to the filing of the orig- _
inal petition herein, the Court of Appeals lost all juris-
diction of the case and had no further control over its
mandate or power to recall it.

A A multitude of cases stating the term rule might be
cited. In Wayne United Gas Co. v. Owens-Illinois Glass
Co., 300 U.S. 131, 136-7, (1937) this Court said:
“A court of equity may grant a rehearing, aad va-
_ cate, alter, or amend its decree, after an appeal has.
been perfected and after the time for appeal has
expired, but not after expiration of the term at
which the decree was entered [citing cases]. * * *
But we think the court has the power, for good

. * 226

reason, to revise its judgments upon seasonable ap-
_ plication and before rights have vestec! on the faith
of its action: Courts of law and equity have such
power, limited by the expiration of the term at
_ which the judgment or decree was entered and not
by the period allowed for appeal or by the fact that
an appeal has been perfected.” 89 :

That this salutary rule ten today i in full vigor
is clearly indicated by both the prevailing and minority
opinions in the decision handed down by this Court on
January 3, 1944 in the case of Hill, etc. v. Hawes, Oeto-
ber Term 1943, No. 4. a

There a court of original jurisdiction was permitted
by the majority opinion to re-enter its judgment, thus
affecting the time for appeal, where such action was
taken when “The term had not expired and the judgment
was still within control of the trial judge.” That the
reasons underlying the rule are cogent today is demon-
strated by the opinion of the Chief Justice objecting to
the action permitted as disregarding “considerations of
certainty and stability which have hitherto been con-
_ sidered of first importance in the appellate practice of

the Federal courts” and saying:

“It is in the public interest, and it is the very
purpose of limiting: the period for appeal, to set a
definite and ascertainable point of time when the
3 shall be at an end * 3

‘The term limitation has Bae been a by
this Court to be one of jurisdiction:

“At the end of the term, the parties. are dis-

charged from further attendance on all causes de-

*

_ cided, 100 we have no power to wile. them back.
After that, we can do no more than correct any
clerical errors that may be found in the record of
what we have: done.“ Brooks v. Railroad Co., 102
U. S. 107. N

„But it is a rule equally well established, that
altter the term has ended all final judgments and de-
erees of the court pass beyond its control, unless
steps be taken during that term, by motion or other-
wise, to set aside, modify, or correct them; and if
errors exist, they can only be corrected by such pro-
ceeding by a writ of error or appeal as may. be
allowed in a court which, by law, can review the de-
cision. * * And this is placed upon the ground
that the case has passed beyond the control of the
court [citing numerous cases }.” Bronson v. Schul- N
ten, 104 U.S. 410, 415.

See * Wetmore v. Karrick, 205 U.S. 141, 151.

: Bronson v. Schulten, supra; was the law of the land
when the Circuit Courts of Appeals were established by
the Act of March 3, 1891, c. 517. Section 3 of that Act
required annual terms for the Courts of Appeals, and
the same provision has been repeatedly re-enacted. 28
U.S. C. A. § 223. These enactments lend the binding force _
of statute to the term rule, insofar as the Circuit Courts
of Appeals are concerned. Williams, “Federal Prac-
tice”, Sec. 7, pp. 67-8.

. The effect of the term limitation has been somewhat
modified, insofar as District Courts are concerned, by
virtue of the new Rules of Civil Procedure, promulgated
in 1938 according to statutory authority. Act of June

a

19, 1934, c. 651, § 12.“ These rules, however, do not
apply to Circuit Courts of Appeals, wherein the term
rule applies with all its vigor. Nachod et al. v. Engineer-
ing and Research Corporation, 2 Cir., 108 F. 2d 594.

The rule has been uniformly observed by the Circuit
Courts of Appeals. Some of their decisions are listed in
the footnote. + ;

It is initiate plain, therefore, that the court be-.
low had no power, because its jurisdiction had long since
ended, to recall the mandate and re-hear the Hazel in-
fringement suit, as the majority of the court belo low, on
reflection, held.

| Ct. Sprague v. Ticonic Bank, 307 U.S. 161, 169.

which, while commenting on the effect of the new Rules
of Civil. Procedure, insofar as terms are concerned,
points out that prior to their adoption a final decree in
a suit in equity could be revised only —_— the term of
court of its entry”.

7+ First CIRCUIT: —
Casey v. Sterling Cider Co., 15. F. 2d 52;
Hart et al. v. Wiltsee et al., 25 F. 2d 863.

SECOND CIRCUIT: ae
Watts, Watts & Co., Limited v. Unione Austriaca
„„ Navagazione, 239 Fed. 1023;
Sundh Electric Co. v. Cutler-Hammer Mfg: Co., 244 .
Fed. 163, 170; a
* Dobson v. United ‘States, 31 F. 2d 288; certiorari de-
' nied 278 U.S. 653.
THIRD CIRCUIT:
Realty Acceptance Corp. v. Montgomery, 51 F. 2d
642; affirmed 284 U.S. 547.
FourtH CIRCUIT: *
Foster Bros. Mfg. Co. Inc. v. National Labor Rela-
tions Board, 90 F. 2d 948.

—29—

The procedure urged by petitioner is
unwarranted and improper. ö

The amended petition as presented to the Circuit
Court of Appeals initiates what can only be considered
to be an original proceeding. It is equivalent to an
original bill—an independent procéeding—to impeach
the judgment of that court. Even the dissenting opinion
below concedes this (R. 227-8). But the Court of Ap-
peals cannot properly entertain such a bill, for to do so
would result in the court constituting itself a nisi prius
court from which there would be-no regular channel of
appeal to a court of review. The court below, being one
solely of appellate — has no power to consider

an original bill.

PD Upon consideration of the petition herein and of the
authorities the court below necessarily 80 concluded and

FIFTH Circutr: j | :
Wichita Royalty Co. v. City Nat. Bank sali Wichita
Falls, 97 F. 2d 249.
SEVENTH CIRCUIT:
—- * Cleveland, C., 0. ck St. L. Ry. Co., 2
EIGHTH CIRCUIT:
Guaranty Trust Co. of New York et al: v. Minne-
apolis & St. L. R. Co. et al., 98 F. 2d 345, 346-7;
‘Walsh Construction Co. v. U. 8. Guarantee Co., 76
F. 2d 240-243. Jet.

NINTH CMcurr:

Was key v. — 179 Fed. 273. 274.

28 U.S. C. A. 225 (Judicial Code, Section 128);
United States v. Mayer, 235 U.S. 55, 65; But the juris-

of the Circuit Courts of Appeals is exclusively

llate * * *.” Whitney v. Dick, 202 U.S. 132, 137,
; Realty Acceptance Corp. v. Montgomery, 284 U.S.
ut, 549. See also 28 U.S. C. A. & 863 and note thereunder.

itself pointed out its lack of power—even were it so
inclined, which it was not-~now to grant the. prayer of
the petition and order a modification of the judgment
entered in the District Court in 1932 in response to its
mandate. The court said (Opinion, R: 226)

“We are without power to affect a final decree of a
Distriet Court except in the exercise of our appellate
jurisdiction and, once our mandate, based upon an
order of a competently.constituted court, goes down,
our control over the decree below entered pursuant
to the mandate comes to an end unless the mandate
be recalled or action otherwise be taken within term
time to extend our jurisdiction. *

The court . below was right: it had no power to
entertain the petition as an original bill to impeach its
prior judgment. The sole purpose of the amended peti-
tion is (R. 149) to set aside the judgment of the court
below, and the judgment entered pursuant to that court's
mandate by the District Court, for alleged fraud.

An original bill is the only method by which a final
judgment can be attacked on the ground of fraud after
the expiration of the term of its entry. Bronson v.
Schulten, 104 U.S. 410; United States v. .
98 U. S. 61.

Such a ground of relief fi. e., fraud] can be made
the basis, not of a bill of review, but only of an orig-
inal bill, or, as it is sometimes called, an original
bill in the nature of a bill of review . Dowagiac
Mfg. Co. v. 1 Mfg. Co., 6 Cir., 155 Fed. 524,

4 528. ; f

An original bill is a proper inated’ of seeking re-
dress against a decree obtained by frau
A bill to impeach a decree for fraud does not operate

* | os
— =
to review the * or seek te undo or reverse it,
but merely to leave it standing rsed and to
deny to the party who t by fraud any

right to have the fruits of it A bill to im-
peach a decree for fraud is an original bill.” (4 Cyc.
of Fed. Proc., Sec. 1159, pp. 342, 344, 345.) :

f The necessity for application of that established rule
in n this Proceeding is apparent.

; Where, as here, a judgment has become final and
men have acted upon it, it becomes the foundation of
‘new rights and new undertakings. In the present case

the petitioner, having full information as to the initial
_ authorship of the Clarke article, decided to settle its
controversy, end the litigation, and enjoy the benefits of
its settlement. If this settlement which has been. the
foundation of subsequent conduct were to be vitiated.
there would arise many matters to be adjusted which
could only properly be considered in an original proceed-
ing brought to a court of original jurisdiction. An ap-
pellate court is neither equipped nor does it have the
power to solve the manifold problems thus presented.

Without the opportunity in response to an original
bill in a court of original jurisdiction to submit witnesses
in its own behalf and to cross-examine the moving
party’s witnesses, a respondent would be deprived of a
full and fair opportunity to dispel or rebut any charge of
fraud brought forward against it. Moreover, neither
party would have an appeal as a matter of right.

The Art Metal cases are not applicable here.

Petitioner seeks (Br. p. 32) to avoid the recognized
rule that jurisdiction ends when term ends by invoking
the decisions in Art Metal Works, Inc. v. Abraham

Lb

—32—

4 Straus, Inc., 2 Cir., 107 F. 2d 940, 107 F. 2d 944, cer-
tiorari denied 308 U.S. 621. But those decisions are not
applicable here, nor are they in conflict with the well
established term rule or with the decisian below, as was
pointed out by the court below in a discussion which
tarefully considered their possible application to the case
at bar (Opinion, R. 225-6) :
ce procedure followed in the Art Metal cases,
‘cited supra, does not derogate from this rule. There
the vote of a judge of the Court of Appeals who had
been corrupted in respect of that litigation was
‘necessary to produce one of-the two decisions in the
- appellate court betwcen the same parties and involv-
ing the same patent. so that no qualified court had
really disposed of those appeals; and, by the sdme
token, no competent mandates ever issued, hence,
the term time was irrelevant. The appeals were in
effect treated as never having. been coram judice
theretofore. The orders thereupon entered in order
to clear the record in the Art Metal cases of the
former invalid action taken therein cannot properly
be utilized to spell eut power in a Circuit Court of
Appeals to recall its mandate after the expiration
of the term when no action has been taken within
the term to continue the jurisdiction of the court.”

In short, the situation in the Art Metal cases, at the,
time the petitions therein were filed, was that, in legal, -
effect, there had never been a hearing before a properly
qualified appellate court, no judgment had been entered.
and consequently there had been no expiry of the term.
This was the basis of distinction between the Art Metal
cases and the general term rule, urged both before the
Court of Appeals and in opposition to the petitions for

_Y ey @
certiorari by counsel for the Art Metal Works. It was
evidently the basis of distinction upon which the Court
of Appeals proceeded therein. The same court was
fully mindful of the term rule because, shortly after-
wards, in a case where, as here, there had been a final
judgment by a properly constituted court, it held:

“Our term having expired ‘since the mandate

went down, we have no power to recall it.” Vachod
et al. v. a 2 Cir.,
108 F. 2d 594.

As the court below pointed out in the case at bar

(Opinion, R. 225-6):

a “The Yow we. thins’ tale ef the procedure fellowes
in the Art Metal cases is confirmed by the fact that
after the action taken therein looking to a de novo
argument of those appeals, the same court, com-
posed of the same judges who had sat for the re-
argument of the Art Metals appeals and had dis-
posed of them on November 20, 1939, just one month
later (December 22, 1939) reasserted in the Nachod
case, supra, the lack of power in a Court of Appeals
to recall its mandate after the term has expired.”

While we fully recognize that denial of certiorari
does not ordinarily indicate either approval or disap-
- proval, by this Court, of the decision of a Court of Ap-
peals, we feel that, in all the circumstancés of the
Manton situation, denial of certiorari by this Court in
the Art Metal cases, 308 U.S. 621, and in Bridler v. Photo-
stat Corp., 310 U.S. 648, in each of which this very point
was at issue, lends material force to our contention.

In the Hagel infringement suit, a full and fair hear-
ing was had before a properly constituted and qualified
Court ‘of Appeals. The judgment of that court was

a?

entered, its mandate issued and the term in which those
proper and judicial acts were done expired. On the

1 expiration of that term, no. steps having been taken to
continue the jurisdiction, the power of that court over

its judgment and mandate en There is no analogy

either in the facts or the necesgzies between the Art
Metal cases and the Hazel infringement suit. Conse-
quently, the court below correctly held that it had no
power to disturb its judgment, even had the factual con-
siderations moved it to do so. which the court rea
found they did not (R. 225.

Petitioner’s counsel (Br. p. 33) has misapprehended
the basis of the distinction from the Art Metal case
which we urged in the court below and which that court
accepted as sound. The term “pecuniarily interested”
is plainly not apposite to Judge MANTON. In writing the

opinions in the Art Metal cases, he was not sitting as a
judge of cases in whose subject-matter he had a pecu-
niary interest but was writing opinions which had been
bought and — for in advance.

‘The dissenting ‘tition below is erroneous.

The dissenting opinion in the court below urges that
the Art Metal cases are applicable here, not because of
identity of circumstances but because of an asserted

analogy in the situations (R. 228). The dissenting opin-
ion pays no attention to the statutory limitations on the

judicial power of the Circuit Courts of Appeals. It cites
the Judicial Code, 28 U.S.C. § 377, as authority for the
proposition that we have at our disposal every writ.
necessary to protect and maintain our jurisdiction”, but
_ ignores the decisions of this Court limiting the effect
of that section of the statute to cases where jurisdiction

—35—

currently exists. M’Clung v. Silliman, 6 Wheat. 598,
601-2, 5 Curtis 184, 186; Adams v. U. IS. ex rel. McCann,
317 U.S. 269, 272-3. It attempts no answer to the uni-
form decisions on limitation of appellate jurisdiction by
term beyond saying that since the petitions were granted

in the Art Metal cases they ought to be granted here. |

The arguments marshaled in support of his conten-
tion by the learned dissenting judge below led him into
a wholly untenable position. He held that “The peti-
tions in: their present form.are in substance bills for
u relief against decrees on the ground:of fraud” (R. 227).
He recognized that “The word ‘bill’ of course connotes |
an original action * * *” (R. 228); he rejected the sug-
gestion that the facts alleged in the petition should be
proven in a District Court on original bills or bills for
review (R. 231) and concluded with the contention that
procéedings should be had in the Court of Appeals to

“give the petitioners full opportunity ta prove the

nature of the fraud which was practiced upon this

court and that that fraud caused this court to give

a broad instead of a narrow. construction to the

_ Claims of the Peiler. patent in issue resulting in the

decrees complained of. If such proof is made,“ I

think we have the power to set aside our decrees and

our mandates and grant rehearings and that we
should do 80% (R. 241). .

It thus appears that the learned dissenting judge
‘proposes to convert the Court of Appeals into a trial
court in which an original bill may be filed, witnesses
may be examined and cross-examined and a decision

- majority concluded that not even a prima
. case had been made out (p. 41 infra).

: a

. °
reached, with all right of appeal denied to the losing
party. Following this, if the decision be in favor of the
petitioners, he would have the Court of Appeals recall

a mandate issued in a term which had expired a decade
before and grant a rehearing. 1

The dissenting opinion below thus entirely over-
looks, or ignores, the fact that, by the statute creating
_ them, the power of the Circuit Courts of Appeals is ap-

pellate only. 28 U.S.C. § 225. It also ignores the stat-
utory prohibition on the Circuit Courts of Appeals to
receive new evidence. 28 U.S.C.A. § 863 and note there-
2 Lau Ow Bew v. United States, 144 U.S. 47.

The learned dissenting judge also appears to have
entirely overlooked the controlling decision of this Court
in Realty Acceptance Corp. v. Montgomery, 284 U.S, 547,
where this Court, affirming the Third Circuit Court of
Appeals, expressly denied the right of the Court of Ap-
peals to receive new evidence in mitigation of damages
in a case where, it was alleged, a fraud had been per-
petrated on the court by way of suppression of evidence,
but left the unsuccéssful litigant free to proceed by
a bill in equity, as the court below held petitioner
might do.

petitioner evidently ‘recognizes the legal frailty of
the dissenting opinion, for it does not urge upon this
Court that the course therein proposed should be fol-
lowed. Petitioner urges, rather, that the Court of Ap-
peals, on the mere allegations and _ affidavits filed below,
should vacate and set aside its former decision without’
any inquiry, by way of examination and cross-examina-
tion of witnesses, into the truth of the matter, and pro-
ceed forthwith to re-hear the Hazel infringement suit
(Br. p. 34). Petitioner’s proposed course goes directly

counter to the holding of this Court i in Jackson, v. Irving
Trust Co., 311 U.S. 494, 499:

But, as the Circuit Court of Appeals observed, there
was no bill of review presenting such a question and
no justification for setting aside a decree upon that
ground merely upon affidavits.” ©
In the same case, entitled below as Sorenson v.

Sutherland, 2 Cir., 109 F. 2d 714, 719, ee * of Ap-
peals had said: 3
Moreover, if a decrée is te be set asidé, on the
ground of fraud, nine years after it was rendered,
the remedy would have to be by bill of review, which

would only be allowed if the court were satisfied that

the evidence was not available at the time the orig-
inal-suit was litigated and that it was presented
without undue delay after discovery. United States
v. Throckmorton, 98 U.S. 61, 25 L. Ed. 93; Central
Trust Co. v. Grant Locomotive Works; 135 U.S. 207,
10 S. Ct. 736, 34 L. Ed. 97; Toledo Scale Co. v. Com-
puting Scale Co., 261 U.S. 399, 421, 43 S. Ct. 458, 67

L. Ed. 719. In no event would there be any justifi-

cation for setting aside a decree on affidavits with-
out examination and cross examination of witnesses
particularly where the affidavits proved to be con-
tradictory in-respect to important issues.”

There is no conflict between the decision below
and the Throckmorton and Marshall cases.

Again urging matters carefully considered ond ex-
pressly and correctly decided against petitioner by the
court below, petitioner (Br. pp. 29-31) seeks to take
itself outside the term rule by invoking the decisions of
this Court in United States v. Throckmorton, 98 U.S. 61
and Marshall v. Holmes, 141 U.S. 589.

38- ————— ci

The question of whether Hazel had a full and fair
hearing and the differentiation made by the court below
between the cited cases and the Hazel infringement suit
are dealt with at pp. 70-3 herein, where we show why the
court below correctly decided that this case presents no
ground for making an exception to the general term rule.

We here point out merely that both the cited cases
dealt with original bills brought in courts of original
jurisdiction ; that neither of those cases is authority for
the proposition that an appellate court has the power
to recall its mandate after the expiration of the term;
and that neither is in conflict with the established rule.
that no such = exists. 3

The English cases relied on * petitioner
are not applicable.

Petitioner cites three English cases (Br. p. 32).
Those cases cannot control here, particularly in view of
the statutory requirement of annual terms for our Cir-
cuit Courts of Appeals (p. 27 supra). .

1 Terms were abolished in the English courts by the

Judicature Act of 1873. Encyclopedia Britannica, 11th
Ed. Vol. 26, p. 642. Consequently The Alfred Nobel etc.,
87 L.J.P. 183, decided in 1918, is of no persuasion here.
Moreover, the Prize Court is one of original jurisdiction,
and no question ef mandate was involved.

Richmond v. Tayleur, 1 Peer Williams 737 (1723)
and Brooke v. Lord Mostyn, 33 Beavan 457 (1864) are
clearly distinguished on three grounds, (a) they were
in courts of original jurisdiction, (b) they both involved
the estates of infants and were not adversary proceed-
ings, (c) they were prior to the decisions of this Court

*

. §

in United States v. Throckmorton, 98 U.S. 61, and Bron-
son v. Schulten, 104 U.S. 410, which are ‘controlling here.
In neither case was relief given, the court upon consid-
eration of each case finding that no deception inducing j
its prior decision had been practiced upon the court—
exactly what the court ~~ found in the case at bar.

Appended to the decision in Richmond v. Tayleur
isa note by Peer Williams, editor of the case book, point-
ing out an available procedure similar to that suggested
to Hazel -by the court ~— in the case at bar, as
follows: ö

Note: In this case it was held, that where an
infant conceives himself aggrieved by a decree, he
is not under a necessity to stay till he comes of age a
before he seeks redress, but may apply for that pur-
pose as soon as he thinks fit; neither is he bound to
proceed by way or réhearing or bill of review, but
may impeach the former decree by an (2) original
bill, in which it will be enough for him to say the
decree was obtained by fraud and collusion, or that
no day was given him to show cause against it; and
Mr. Cottingham: (his lordship’s secretary) ac-
quainted the court. that Mr. Vernon, in case of an
erroneous decree against an infant, used always to
advise the bringing of an original bill to set it aside,
but in such bill to allege specially the errors in the
former decree.” ö

Since the procedure followed in two of the English
cases cited by petitioner was adopted in a court of ori-
nal jurisdiction in cases involving the rights of infants,
without adversary proceeding, and since in the third
case cited by the court had no term, the same having
been, abolished by statute, we * the cited decisions

——— —

are of no effect, persuasive or otherwise, in the case at
bar and offer not the slightest basis for an — a
to the term rule in case.

*

The public . does not 8 a reversal of the
judgment below; it requires that the judgment
below be affirmed and that petitioner be held

to a procedure which would. = the rights
of both parties.

Petitioner urges (Br. p. 28 that the public interest
requires reversal of the judgment below. We are fully. _
cognizant of the statements of this Court in respect of
the interest of the public in patent cases. Mercoid Corp.
v. Mid-Continent Investment Co. et al., decided January
3, 1944; Morton Salt Co. v. Suppiger Co., 314 U.S. 488.
We do not question or seek to modify or impair in any |
way the holdings of the Court on this score. We do insist
that the protection of the public interest forbids a re-
opening of the judgment in the Hazel infringement case
at all, much less, as respondent would do, merely on
allegations and affidavits without giving respondent
the right to.examine and cross-examine witnesses and
to have an appeal as a matter ef a, in * event of
an adverse *

The Mercoid. and Morton Salt cases are not appli-.
iil here. No patent: issues are involved in the pro-
ceeding at bar, although as we have pointed out (pp.
3, 17 supra) petitioner seeks to becloud the issue here
by attempting a belated reargument of matters which
were at issue in a patent case years ago. It involves none

of the.questions posed.by the cases above-mentioned.
This proceeding involves three main issues—two of
fact and one of law. The questions of fact are (1)

whether a material fraud was perpetrated on the court
below, serving to. prevent petitioner from making a full
and fair defense, and inducing the court below to an
_ erroneous decision, and (2) whether petitioner was
guilty of ‘laches. Petitionér failed to make a showing
‘even sufficient to move the Court of Appeals to grant
petitioner p permission to apply to the District Court for

leave to file a bill of review (see p. 23 supra, ci. Raffold —

Process Corp. v. Castanea Paper Co., 3 Cir., 105 F. 2d |
126, 129, which shows the liberal attitude of the court
below in granting such leave). 3

The question of law, * whether long after
expiration of the term in which its mandate was entered
the court below had any power to recall that mandate,
was likewise decided against petitioner. That decision
was solidly bottomed upon prior decisions of this Court
and long uniformly followed by the lower courts.

Petitioner has had its full day in court. The court
below by its careful and conscientious consideration
of the issues involved, has fully — the public
interest. :

| The public interest: forcefully requires affirmance
of the judgment below, for parties should be protected
from being harassed by endless litigation, and the
finality of decisions by properly constituted courts —
should be recognized.

Respondent contends, of course, that — is
entitled to no relief for the reasons pointed out in the
decision of the court below on the merits and on peti-
tioner's standing to seek relief and also on thé other
grounds herein set forth. But respondent never has

denied there always was available to petitioner a proper

procedure—nathely, the filing of en original bill in\a
court of original jurisdiction —

The view taken by the court below as to the proper
procedure was as follows (Opinion, p. 226):
“If either Hazel-Atlas or Shawkee feels itself ag-
grieved by reason of fraud attaching to the pro-
ceurement of the Peiler patent, the course is open to
them to file original bills to impeach the decrees,
now standing against them in the District Court,
on the ground of the alleged fraud in the issuance |

of the patent whereof the decrees are predieated.

Dowagiac Mfg. Co. v. McSherry Mfg. Co., 155 Fed.
524, 527-528; Cyclopedia of Federal Procedure, Vol.
4 8 1159, pp. 342-345.”

And to advert again ‘to “the public interest”, the
court below points out that if the authorities feel that
the public interest has not already been fully considered
and protected the government itself may act. The court
_ said, (Opinion, R. 227) :.

Na.br is the United States, which has filed a brief
herein as amicus curiae, helpless to annul a patent
that has been fraudulently obtained. United States
v. American Bell Telephone Company, 128 U.S. 315,
370. But its recourse in such regard is by direct.

action to that end. In this instance, however, the
Government, as its brief expressly states, ‘is not at
present seeking to intervene in the instant suits, nor
is it now taking steps to have the potent here in-
volved annulled.’ ”

It is respectfuliy submitted that the decision of the
court below, rejecting the prayers of an improper peti-
tion filed in an abortive proceeding, should be affirmed:

* 43

* ‘Second Point

There | was no fraud in the preparation and b
tion of the Clarke article, or an its use by respondent in
the Patent Office or in the Circuit Court of Appeals. The
- (Qlarke article was not material to the decision of the

Court Of Appeals.

In the opening portion of this brief (pages 10-14)
we have discussed the origin and preparation of the

Clarke article and the fact of its truth. There was no

.fraud because (1) the Clarke article was true, (2) the
article was Clarke's when it was published, and was in
good faith so regarded and referred to by respondent's
counsel, and (3) the article did not procure the issuance
of the Peiler patent involved in the Hazel infringement

suit, nor was it material to the 1932 decision of the court

below in that suit. —

The Clarke article was true as published, and
was so regarded by respondent’s counsel _

In the seventeen years since the Clarke article ap-
peared, no one has found any inaccuracy in the article
as published. Petitioner did not challenge its accuracy
below. Its present criticisms, apparently born of the
exigencies created by the findings below, are without
merit (pp. 12-14 supra).

If there were any inaccuracy in the article, ( which
we e deny) it seems extraordinary that neither petitioner,
to whose attention the article had come shortly after
its publication, nor its hired investigators, have before
now discovered any falsity in any part of the article, in
view of the fact that it was published in 1926, and

&
was the subject of discussion in Hazel's councils-at the
time of the trial at Pittsburgh in 1929 (R. 188).

4, Petitioner seeks (Br. p. 8) to bolster its claim of

~ falsity by a letter from Hatch to Carter dated April 19,
1926 (R. 101). Between that date and the publication
of the article in July, 1926, it was redrafted, the chart
Was amended, and “all errors which’ were dependent
upon facts capable of being made more nearly exact were
corrected before the fina! draft which was published
was made” (R. 62). |

| Petitioner’s contention really reduces itself to the
proposition that the article was untrue, and was an im-
position upon the Patent Office and the Court of Ap-
peals, because it was originally drafted by Hatch and
not by Clarke. From this ground of attack, the peti-
tioner is barred by laches and lack of diligence as
pointed out below. However, the facts that the article
was based primarily upon the published proceedings of
the Glass bottle Blowers’ Association (R. 70)*, that
Clarke approved and signed it and that Maloney, Presi-
dent of the Glass Bottle Blowers’ Association, approved
it and vouched for its truth effectually remove the
ground of petitioner’ s claim.

, Clarke adopted the article as his own. In sin gre
_ ceedings, it is customary for attorneys to prepare affi-

* A columnar presentation is in the Record, pp. 195
et seq., showing source materials for all those portions -
of the article quoted in the 1932 opinion. of the court
below in the Hazel infringement suit, including excerpts
from the Bottle Blowers’ Proceedings, from the appeal
record in that suit, from court decisions,. from e an I
6 — publication, ete. 3

7 N
“davits for persons whose written testimony is desired,
and for those persons to sign them after checking over

the attorney-prepared drafts. Similarly, the Clarke ar-

ticle was prepared by a Hartford attorney from. union
minutes, and was signed, ‘after careful checking, by
Clarke. To use à common phrase, Hatch was a “ghost-

writer“. ‘When Clarke had thus carefully checked
over the ghost-written article, revised it where he con-
sidered it erroneous, and then adopted it as his own,

Hartford properly regarded the article as Clarke's, and

properly used it as such.

a the’ Clarke article had: been submitted to the ;
Patent Office in the form. of an affidavit, no criticism
whatsoever of Hartford or its counsel: could possibly

arise. As a matter of fact, Mr. Clarke did subsequent 7

execute an affidavit as to the correctness of the article
(R. 89). Inasmuch as the article was true, as Hazel's

counsel realized and acknowledged (R. 189), and as
Hartford’s counsel also recognized and believed (R 54,
56, 72, 92), and inasmuch as the article Was in effect
Clarke’s, he having checked, corrected, sponsored and
signed it, the.mere question of the form in which its
contents were submitted to the Patent Office is imma-
terial.

Petitioner characterizes respondent’s activities in

ge
nent

connection with the Clarke article as fraudulent. Where-

in is there any fraud? If the alleged fraud is that Hatch
initially drafted: the. article, the answer is that it was

true, that Hatch took every possible precaution in mak- ,
ing the article true before publication; and that it was

; adopted by Clarke as his own. If the alleged fraud was
in citing the article to the court below, the answer is that

the facts on the point for which the article was cited

*

were true, that the court must have realized lack of com-
petence of the article under technical rules of evidence.
that the court did not treat it as one of the “proofs”, and
that petitioner must be presunied to have considered the
matter inconsequential because of its failure to seek re-
hearing upon this ground. The fraud cannot be predi-
cated upon Judge BUFFINGTON’s quotation from the
article because, as hereinafter set forth (pp. 48-53,
infra), the quotations from the Clarke article were not
' essential to the court's conclusions, which were founded
upon and fully supported by other testimony and ex-
hibits properly before it. If the alleged fraud is in re-
spondent’s failure to disclose its connection with the
preparation and publication of the article to petitioner,
the answer is that the petitioner was not deceived be-
cause it already knew the article had been originally
drafted by Hatch, and the court was not deceived because
it saw fit to take no action when the authorship of the
article was challenged in 1934 (Opinion, R. 222-223).

If petitioner did not consider the matter of suffi-
cient importance to call to the court’s ettention, it is
difficult to see how respondent's failure to do so can be
termed fraudulent. It is plain that the parties and the
court were in agreement that the article was mere back-
ground.

_ Respondent submits that the circupistances relied
on by petitoner do not constitute fraud. The ultimate
fact remains inescapable that Clarke reviewed the
article, made changes in it, approved it, assumed respon-
sibility for its accuracy, and published it to the world
over his signature and with his sponsorship. It is there-

tore submitted that no fraud was committed by respond-

a

*

ent’s attorneys at any time in referring to the Clarke
.
of Appeals.

Nn ed iin
was something which, if it were to have been made an
issue at all, should have been presented to the Distriet
Court for its consideration, and Hazel, having decided
not to do so, cannot later complain. Cf. Cromwell v.
County of Sac, 94 U.S. 351, where this Court said: ai

“Thus, for example, a judgment rendered upon a

promissory. note is conclusive as to.the validity of

the instrument and the amount due upon it, al-
though it be subsequently alleged that perfect
defenses actually existed, of which no proof was
offered, such as forgery, want of. a or
payment.”

™

The Clarke article was not material to the Court of
Appeals’ decision in the Hazel infringement suit
5 The court below held in the instant case:
But, wholly apart from the Clarke. Article, the
majority of the in the Hazel-Atlas case, upon
turning to ‘the proofs’, drew their own conclusions
a r action which the court thereupon
took. such was the primary basis of the
majority opinion in the Hazel-Atlas cage *.
eee what was held in the Hazel-Atlas case was
the court’s independent judgment, regardless of the
Clarke article.” (Opinion; R. 224).
That this finding is correct is demonstrated by a
Leading of the Clarke article itself. It is further demon-
- strated by a comparison of the District Court’s decision

—8—
(839 F. 2d 111) with that of the court below (59 F. 2d
399). ; * 8

The District Court rested its opinion primarily i

upon its conclusions, first, that Peiler was not entitled to

a date of invention prior to May 5, 1919 when the applica-
tion for the patent in suit was filed and that as of that
date he had. been anticipated in the art so far as broad
invention was concerned, and second, that disclaimers
of other claims filed in the Patent Office by Peiler, had
narrowed the scope of the claims in suit.

| On appeal; the Court of Appeals found that Peiler
was entitled to an earlier date of invention, that his
“paddle-needle” feeder (which was the first commercial
plunger feeder, and was commercially operated in the
spring of 1918; p. 17 supra). ‘embodied the invention of
the ‘patent in suit, and that, reading the disclaimers in
the light of the applications in which the disclaimed
claims originated, Peiler had made no disclaimer which
affected the claims in suit. None of these matters is
referred to in the Clarke article. Therefore, the sub-
ject matter of the Clarke article did not bear on either
of the basic points as to which the Court of Appeals dif-
fered with the District Court.

The truth of the 0 of the article relating to the
supplanting of stream feeding by gob feeding is recog-
nized by the court below (Opinion, R. 223-4); and is
shown by the District Court’s opinion in.the Hazel in-
fringement suit (39 F. 2d 111-2, The unsatisfactory
results of stream feeding led to suspended charge or
“gob feeding’ * * *”); by the patent application filed

by the Shawkee petitioner, Haub* (R. 87-9); and by
the admission of petitioner's counsel (R. 189).

Moreover, the opinion of the court of A ee in
the infringement suit, written by Judge BuFFINGTON (39
F. 2d 399), itself plainly shows that the opinion was not
based upon the Clarke article. It is apparent from the
opinion that Judge BUFFINGTON. read widely outside the
record, as was proper for him to do,7 in order to add
color and interest to the historical background given in
his opinion. For example, he referred in his opinion to
‘the building of glass factories by the Jamestown colo-
nists to make beads for. the. Indians, and to the history

of the window glass art; neither of which matters ap- |

pears in the Clarke article or elsewhere in the record
of: the infringement suit, and neither of which was
referred to in Hartford’s brief.

But it is even more „ from the opinion that

its references to the Clarke article, as well as its refer-
ences to a German book and to an address before an
English technical society, were not relied on by the court
below for any of its conclusions. The court's conclu-
sions were reached independently of the Clarke article.
- When Judge BUFFINGTON finished with his historical
background, including his quotations from the Clarke
article, he took up the issues in the case before the court.
He said, 59 F. 2d, p. 404:

“We turn to the proofs.for the steps _— up:
1 to this development. a

See our brief in the Shawkee case at No. 423 PP.
+ Brown v. 5 91 U. S. 37.

18.9.

Many pages are then devoted to a discussion of. the

proofs upon various aspects of the case, the references
to the proofs being accompanied by references to various
opinions of other courts in harmony with the views
expressed in Judge BUFFINGTON’s opinion. This discus-
sion includes references to the proofs on at least thirteen

different matters, and there are at least seven references
to the — of other courts.

Judge BuFFINcTon’s references to the proofs follow-. |
ing the above-quoted statement, included the following:

1. Peiler’s testimony as to.the history of his early
' feeder developments (59 F. 2d, pp. 404-405).

2. The Peiler phase-change patent 1,573,742 and its
showing of the Hartford paddle feeder (pp. 405-406).

3. ‘Proofs as to the characteristics of the Peiler
paddle feeder (p. 406).

4. Proofs as to the commercial success of the Peiler
paddle feeder (pp. 406, 408).

*

5. Peiler's testimony as to the limitations of the
Peiler paddle. feeder (p. 407).

6. Peiler’s testimony as to feeding from a down-
wardly opening discharge orifice, the tendency of the
glass issuing from such an orifice to form a “tadpole”
shape, and his idea of alternate acceleration during the
discharge, “stuffing” to fatten the charge and prevent

the “tadpole” shape, and retardation to * the

discharge (p. 407).

7. Proofs that the paddle and ania’ devices were
progressive steps, that the plunger could be added to the

1 2

paddle device and that the plunger device was bottomed
on the paddle feeder work (p. 407).

8. Proofs of the urgent demand of the industry (p.
408). a .

9. Proofs of the extensive commercial acceptance
of the Peiler plunger feeders ‘without advertising and on
their own merits, including the use of such feeders by
_ the Owens company (pp. 408-410).

10. Proof that the Peiler plunger feeder of the
paddle-needle type was the first plunger — ever com-
mercially used (p. 408).

11. Reference to “our study of the art te 409).

12. Proof that the cost of Peiler apparatus was
only one-fifth of the cost of an Owens bottle machine
(Pp. 408, 410).

13. Proofs as to orior at patents not showing
Peiler's combination (pp. 411, 412, 413). He referred,
for example (p. 412), to “alleged anticipation which
absolutely did not disclose Peiler’s device“, and stated
(p. 413) “not only does every prior patent fail to show

Peiler’s combination ir ae

The references to decisions of other judges recited
by Judge BuFFINGTON in connection with his discussion
of the proofs include/ the following:

1. Findings of the Master and of Judge 3 in
the Kearns-Gorsuch* case as to the urgent demand for

feeders in 1913 (p. 404).

* The Kearns-Gorsuch Bottle Company; a subsidiary
‘of the petitioner, Hazel-Atlas, was a defendant in one
of the cases reported at 58 F. 2d 701. 6 Cir., Hartford-
Empire | Co. v. Nivison-Weiskop} Co., ete.

—52—

2. Judge Ginson’s statement as to the differente
between stream feeding and gob feeding (p. 404).

3. Judge THoMmAs’ opinion in the Brooke case · as
to the Peiler paddle feeder (p. 406).

4. Judge GIBson’s statement as to the defects of
stream feeding (p. =

5. Judge Gmsox- = recognition of the worth of the
Peiler plunger feeder (p. 408).

6. Judge Hovon's recognition of the —* of the
Peiler plunger feeder (p. 408).

oF Judge-THomas’ recognition of the differentia-
tion. between the Hartford feeding system and *
feeding ( P. 408).

Petitioner’ 8 brief, pp. 18-19, refers to a sentence
from the Clarke article which is quoted twice by Judge
BUFFINGTON (59 F. 20, pp. 404, 407). The second quota-
tion, p. 407, was accompanied by the comment that the
Keen accuracy” of this language will be better appre -
ciated from what has been shown in the intervening part
of this opinion”. The “intervening part of this opinion”
deals with the evidence in the record, summarized above,
as to the development and characteristics of the Peiler
system of feeding. ä

It is thus evident that Judge BUFFINGTON’s opinion.
far from being based upon the Clarke article, was based
upon the proofs in the record. A reading of the article

* Homer Brooke Glass Co. and The Owens Bottle
Machine Co. v. Hartford-Fairmont Co., 255 Fed. 901
a (D.C. Conn.); affirmed 262 Fed. 9 2d Cir. 1919).

¢

will demonstrate that it was quoted by Judge BUFFING-
TON merely as affording convenient statements of. back-

ground in harmony with the views derived by the court
from its own study of the proofs of record.

Therefore, the finding of fact by the oat below,
that the Clarke article was not material to that court’s
1932 decision, is clearly correct. This, without more, is
sufficient to dispose of this cases

Third Point

The court below correctly held that petitioner had
made no timely representations to that court concerning
the Clarke article, and that petitioner, because of its
laches, had no ‘standing to seek the relief for — it.
petitioned.

The court below held:

In short, Hazel-Atlas made no timely representa-
tions to this court concerning’ the Clarke article.”
(Opinion, R. 221)

* * * » & * * *

*

Not possibly can the information as to the facts
attending the publication of the Clarke article be
deemed to rate as after - discovered evidence so far
as either Hazel-Atlas or Shawkee is concerned.“
(Opinion, R. p. 223)

* „ * * 7 * 8 * „ *
„So far we have considered this matter on the
merit of the petitioners’ allegations and their stand-
ing to seek the relief for which the ptition; and
we conelude against them on both grounds.“ (Opin-

ion, R. 225)

—54—

These findings by the court below are manifestly
‘correct. With knowledge of the facts now complained
of, viz., the circumstances surrounding the authorship -
and publication, of the Clarke article, and with such
knowledge that it could have learned and proved every r
fact relevant to this matter if it had exercised even the
_ slightest diligence, petitioner nevertheless chose to stand
idly by for over nine years. Meanwhile, it made a cross- .
license Agreement with respondent which proved highly
profitable to petitioner. In 1941, when the contract be-
came unprofitable to petitioner, it changed its mind and
began the proceedings now under review. It would be
hard to conceive of a plainer case of laches.

One who undertakes to impeach a judgment for
fraud must be free from negligence in himself or his
agent. 4 Cyc. of Fed. Proc., Sec. 1159, p. 343. He must
not be guilty.of laches. Ibid. He must have exercised

diligence in discovering the fraud and in presenting it .
to the court. Toledo Scale. Co. v. Computing Scale Co.,
261 U. S. 399, 425; National Brake d Elec. Co. v. Chris.
tensen, 254 U.S. 425, 430; Eclipse Machine Co. et al. v.
Harley-Davidson Motor Co. et al., 3 Cir., 286 Fed. 68, 69.

The 3 facts

(1) During or prior to the trial of the Hazel in-
tringement suit, in 1929, Hazel knew and was in a posi-
tion to prove by Hatch’s admission to Wood, as well as
by Clarke, that Hatch had initially drafted the Clarke
_ article (Wood affidavits, R. 28, 30, 182, 187-189).

(2) During ‘the Hazel trial, the Hazel “defense
group” discussed the Clarke article in detail, and the
possibility of its being utilized “in defendant’s favor or

P-

to plaintiff’s embarrassment”, (R. 188). Hazel’s coun-
sel, with knowledge that the article had been prepared
in the first instance by Hatch, decided not to make any
attack upon it or its authorship, because (a) the facts
contained in it as to the widespread use and commercial
success of the Hartford type of feeder were freely ad-

mitted by everyone concerned in the suit and could not

be successfully controverted”; and (b) “an attack on
the article might be a boomerang” in that, it might

7 emphasize the truth of those parts of the article which
were of any possible pertinence. In other words, Hazel
refrained from attacking the article at the trial because
its counsel believed that its authorship was unimportant
and that any attack on the article would merely empha-
size its truth. (R. 188-189; Opinion, R. 219-220).

(3) In May, 1932, Hazel employed one McCarthy
to make a further investigation of the Clarke article.
On May 13 and May 24, 1932, McCarthy interviewed
Clarke at Toledo. (R. 19; 23) Clarke said that “every
word of that article is true and I will stand by it”,
and “of course if I am subpoenaed I will give all the
facts as I know them” (R. 20, 24). No steps were taken
to subpoena Clarke, and McCarthy apparently had no
interest in procuring Clarke’s affidavit that the article
was true.

(4) On May 17, 1932, less than two weeks after the
decision of the Courf of Appeals, Hazel procured the
affidavits of the Messrs. Wood, entitled in the appeal in
the Hazel case and in the Third Circuit Court of Appeals,
setting forth Hatch’s admission that he had drafted the
article. (R. 26, 29). Subsequently; Hazel also had the
affidavit of its investigator, McCarthy (R. 190), in which
McCarthy said that Clarke had admitted to him that

—— —

—56—

certain essential parts of the article, including the chart,
had been furnished by Hartford (pp. 58-9 infra).

Notwithstanding all of the matters just stated, peti-
tioner made no effort to lay before the Court of Appeals
the fact that the article had been drafted initially by
Mr. Hatch and not by Mr. Clarke, or to seek a rehearing
or reversal of the court’s decision on that ground, al-
though five separate extensions of the time to apply for
rehearing were allowed (Opinion, R. 221). Nor did Hazel
ever seek to ascertain from Hartford,“ or from Hatch,
whether the article had been — by Clarke or by
Hatch.

(5) On July 21, 1932, Hazel, entered into a cross- ©
license agreement with Hartford settling the controversy
between them, (R. p. 184). Although by the terms of
the agreement Hazel could cancel on six months’ notice,
it has never attempted to exercise that — (R. 161.
162). ‘

There is no support whatever in the record for
Hazel’s assertion (Br. p. 4) that the settlement was
made because of inability to obtain proofs for the pur-
pose of filing a petition for rehearing. The proofs indi-
cate the opposite, because Hazel did in fact procure the
affidavits of Messrs. Wood entitled in the case but elected
not té use them (pp. 55-6 supra), and “neither the Clarke
article nor its authorship was ever discussed at any
time during the negotiations leading up to the Hartford f
Hazel-Atlas contract”. (R. 161). '

(6) In December, 1939, the Government filed its
complaint in the Toledo Anti-Trust suit, reciting therein
detailed allegations as to the preparation and publication

ty

a

of the Clarke article. Hazel is one of the defendants in
that suit.

(7) The original petition herein was not filed until
twelve years and seven months after Hazel decided not
to attack the article during the trial in 1929, nine years
and five months after Hazel decided not to attack the
article after the Court of Appeals’ decision in 1932, and
twenty-three months after the Government's complaint
was filed in 1939. 3

Petitioner’s lack of diligence

If petitioner ever intended to make any point of
respondent’s connection with the preparation and pub-
lication of the Clarke article, it should have done so, at
the latest, when respondent made incidental reference
thereto in its brief on appeal to the Court of Appeals in
1931. \ @

Even assuming arguendo that petitioner’s failure
to raise the point at that time was justified (which
we deny) because of its contention that the article
was not competent against it, there is no excuse what-
. soever for its failure to raise the issue after the Court
of Appeals’ opinion was handed down and to acquaint
that court with the knowledge and information which
it then had if it ever intended to do so. Manifestly,
petitioner agreed with respondent and the court that
the Clarke article was not essential or material to the
. court’s conclusion, else it would have moved for re-
hearing on the * of the lacx of competence of the
article.

—58—

Petitioner seeks to justify its delay in presenting
to the court below its knowledge as to the authorship
of the Clarke article by characterizing that knowledge
as “contradictory information” (brief, p. 26). But
Hatch’s frank disclosure to the Woods (R. 30), com-
municated to Hazel’s counsel (Wood affidavit, R. 188)
was an admission, provable as such; and Hazel could
have proved by deposition the following statements by
Clarke to Hazel’s investigator McCarthy:

“No, I didn’t write that part of the article”, refer - |
ring inter alia to the last ** of R. 130
(R. 21.)

4642 *

that ne did not prepare the chart and
did not collect the material which is the basis of the
chart.“ (R. 21)

A lot of material from which the Budget article
was prepared was furnished me by others, and some
of it may have been furnished by the Hartford-

Empire Company.“ (R. 21)

% © © he told Wood [in 1926] , as he had told

me [McCarthy], the Hartford-Empire Company

may. have furnished him with certain material and

information on which the article was based.“ bs
22)

„ * * Mr. Clarke * * admitted that oer-
tain essential parts of the article, particularly parts
relating to Gob Feeders and the diagram entitled
‘Relative Bottle Production on Owens Machines and
Gob Feeders’ were not written by himself but fur-
nished by representatives of the Hartford-Empire
Company (R.193).-

ae.

If petitioner ever had any serious thought of bring-
ing this matter to the attention of the Court of Appeals,
it would have subpoenaed Hatch and Clarke.“ Hatch
had freely admitted his initial authorship of the ar-
ticle to the Measrs. Wood, who were ‘counsel for Nivi-
son-Weiskopf Company, defendant in another infringe-
ment suit brought by respondent, and whose relation-
ship therefore to Hatch and to respondent was exactly
that of counsel for petitioner. If petitioner or its coun-
sel had ever asked Hatch, either informally or under
_ subpoena, as to his part in the preparation and publica-
‘tion of the Clarke Article, Hatch would have freely
stated the facts, just as he did to the Messrs. Wood and
just as he did when examined by the Government in the ©
- Anti-Trust trial in Toledo. Petitioner never even made.
inquiry.of Hatch or any other representative of respond-
ent as to the article, its authorship, authenticity or ac-
curacy. This fact in and of itself constitutes ‘such

negligence on the part of the petitioner as to bar it
+ utterly from now seeking equitable relief.

Hazel's inactivity should be considered in two as-
peets, (a) as to its situation at the time of the trial of
the infringement suit in 1929, and (b) as to Hazel's
situation over the period of nearly ten years between
the decision of the Court of Appeals and the * of
Hazel's original petition herein.

As to (a), the situation at the time of the trial: It
is settled law that evidence does not rate as newly dis-
covered” unless it has come to light under circumstances

* Clarke flatly stated to Hazel’s investigator McCar- .
thy in May of 1932 that he would give all the facts if
subpoenaed (R. 135

: which show that it could not with reasonable diligence
have been discovered in time for and produced at the
trial. Pickford v. Talbot, 225 U.S. 651, 661; Toledo
Scale Co. v. Computing Scale Co., 261 U.S. 399, 421. At
the trid) of the infringement suit, Hazel not only had
continuously in its hands the thread , if fol-

Iowed,“ would have led to the facts, but had the very
eee (pp. 6-7, 5,.

supra).
As to (b), ‘Hazel’s situation from 1932 to 1941:

After the decision of the Court of Appeals, Hazel had

- affidavits in proof of the facts but again deliberately
‘withheld the evidence from the court (pp. 8, 56, supra).
The opinion of the Court of Appeals was handed down
May 5, 1932. In the Fall of 1933, while the Shawkee case
was under advisement by that èourt. Hazel’s counsel was „
asked by counsel for Shawkee for information in corrob-
oration or enlargement of the facts Shawkee then had
on the subject. Instead of complying with the request /
of Shawkee’s counsel, counsel for Hazel put him off on
the ground that his recollection was “too indefinite to
be positive”, and that he “would have to go through
the voluminous collection of papers relating to the va-
rious Hartford-Empire litigations, including correspond-
ence, * * (R. 82-3). Thus Hazel’s counsel had the
matter again invited to his attention in the Fall of 1933

and was presented with another opportunity to bring the
matter before the Court of Appeals but chose not to do
so, évidently in recognition of the fact that the Clarke
article had not been the basis of the Court of Appeals’
decision. ; | :

* Toledo Scale Co. v. Computing Scale Co., 7 Cir.
281 Fed. 488, 499.

—61—

After this episode, Hazel again lapsed into satisfied
somnolence for another eight years. It is not shown that
Hazel was moved to activity by the filing of the Govern-
ment: suit in Toledo, in December, 1939 (p. 57 supra),
even to the extent of making inquiry of the Department
of Justice. It waited for nearly two more years, and
Se ee
wane before acting.

’ In view of what has just been poirited out, clearly

there is no merit in Hazel’s retrospective contention
(Br. pp. 4-5, 25-6) that because Shawkee failed in 1934
to convinge the court below that the genesis of the
Clarke article was of any pertinence whatever to its
1932 decision, it would have been futile for Hazel to
_ make a like attempt in 1932. That could not have been
the basis of Hazel’s inactivity prior ta 1934, and was not
the basis of its inactivity thereafter.

Petitioner further attempts to excuse its lack of
diligence by asserting that its 1932 investigation was
“thwarted by Hartford” (brief, p. 25) and “prevented
by Hartford and Owens getting first to Clarke“ brief.
p.4). But Mr. Hatch, the only Hartford representative
who interviewed Mr. Clarke swears:

“At no time did I, nor so far as I know did anyone
else, ask or suggest to Mr. Clarke that he withheld’
any information from anyone regarding the article
or my connection with it.“ (R. 66)

And in connection with allegations in the original
petition herein that Hatch had talked to Clarke who
then changed his formerly cooperative attitude towards

— =

_ Hagel-Atlag” and that “the endeavors of Hazel-Atlas to
investigate the facts concerning the Clarke article
were hampered and prevented by] Hartford.”
Mr. Hatch further swears:

“Both these statements are intros in so far as they
state or imply that I influenced the attitude of Mr.
Clarke toward the Hazel-Atlas Glass Company, or
hampered or prevented the Hazel-Atlas investiga-
tion. I have never at any time asked Mr. Clarke or
anyone else to refrain from giving information to
the Hazel-Atlas Company.“ (R. 70-1)

Unjustifiable insinuation
as to money paid Clarke

Although not supported by the record, petitioner’ oe
brief p. 24 insinuates that the money paid to Clarke by
Hartford in August 1932 was paid for a corrupt purpose
and in fulfillment of a promise made to induce him not
to impart information to the . 8 investigator, 1
McCarthy.

Petitioner’s brief states that on May 23, 1932 Hatch
went to Toledo, saw Clarke and also saw him the next
day, which was the same day that McCarthy saw. Clarke.
Petitioner's brief then says: :

“There is no evidence as to what Hatch said to Clarke
on those two days, but Hatch admitted in the anti-
trust trial that on July 22nd (which was immedi-
ately after the Hazel Company had signed its Hart-
ford license, and when it was too late for Hazel to

apply for a rehearing), that he gave Clarke $500 in
cash (italics in original)“ e

—~63—

Petitioner thus insinuates that Hatch influenced.

. Clarke on or about May 23rd, and before the settlement
of Hazel had been closed, to refrain from giving infor-

mation to Hazel by the promise of a payment of money.
The insinuation is refuted by the record, which estab-

_lishes the following facts:

No request for money was made by Clarke until

July 22, after the execution of the settlement agreement.

This request was a complete surprise” to Hatch. No
money was paid until August 4th or 5th, when Clarke
received 8500, and August 11th, when he was paid 87500
(R. 67-9, 57-8). Tue payments were made in cash
. Clarke 80 requested (R. 68).“

Clarke faced a sudden financial emergency arising
out of the loss of his position as President of the Union
and the failure of his Union bank (R. 37, 67). Hartford
gave him ‘employment to tide him over his emergency
(R. 68). His request for money was forced by these
circumstances, and the payments had nothing to do with
the Hazel litigation, or with Hazel’s investigation of the
authorship of the Clarke article (R. 66-7).

In Hatch’s affidavit herein (R.-69) he says: |
“So far as I. know, Mr. Clarke made no request for
money prior to July 22, 1932 of any person con-
nected with the Hartford-Empire Company, and I
am confident I should have known. it if he had made
such a request. His request of July 22, 1932 came
as a complete surprise to me.”

Ri. The Court will take judicial notice that the Sum-
mer of 1932 was a time of financial distress and many
bank failures.

Nor did the payments to Clarke in any way interfere
with Hazel’s so-called investigation or prevent: Hazel
from obtaining any information it desired. Hatch says
(R. 70):
“On page 5 of the Hazel-Atlas petition [in the

court below], ‘it is said that I 6

‘talked to Clarke who then changed his formerly
cooperative attitude towards Hazel-Atlas’,

. and on page 6 of the Hazel-Atlas petition, it is said
that

the endeavors of Hazel-Atlas to investigate the

facts concerning the Clarke Article, after the

opinion of this Court on May 6, 1932 relied upon

it, were hampered and prevented by Hartford.’

Both these statements are untrue in so far as they
state or imply that I influenced the attitude of Mr.
Clarke toward the Hazel-Atlas Glass Company, or
hampered or prevented the Hazel-Atlas investiga-
tion. I have never at any time asked Mr. Clarke or
anyone else to refrain from giving information to
the Hazel-Atlas Company.” .

Hatch also says (R. 66):

At no time did I, nor so far as I know did anyone
else, ask or suggest to Mr. Clarke that he withhold
any information from anyone regarding the article
or my connection with it.“

The imputation in petitioner's brief and in its peti-
tion in the court below that Hatch's activities ham-
pered and prevented petitioner from getting important

evidence is followed in the brief by a elaim that this left
petitioner with merely hearsay evidence which would
have been useless in applying for rehearing. The fact is

that on May 17, 1932 (R. 26) petitioner had obtained
an affidavit from William R. Wood that Clarke had told

him “I did not write that article. It was prepared and

written by a Mr. Hatch, an attorney for the Hartford-
Empire Company, and he induced me to sign it, which

I did“ (R. 29); and the petitioner had an affidavit of

Edmund P. Wood that “Mr. Hatch at all times has freely
admitted to me that he was the real author of this arti-
ele“ (R. 30). Moreover it would have been a simple
matter · at that time td take Clarke’s } tentionony pursuant
to —

Not only is petitioner’s insinuation — *
the record, as pointed out above, it is also refuted by the
surrounding circumstances. There was no reason why
Hatch should have then sought to conceal his connection
with the article, because Hatch had always theretofore
freely admitted it to Wood and must have assumed that
Hazel was aware of this admission.

Finally, petitioner’s innuendo is belied by its own
investigator, McCarthy, who stated under oath (R. 193)
that on May 24, 1932, which was after Hatch had seen
Clarke,Clarke * * * “admitted that certain essential
parts of the article, particularly parts relating to Gob
Feeders: and the diagram entitled ‘Relative Bottle Pro-
duction on Owens Machines and Gob Feeders’ were not
written by himself but furnished by representatives of
the Hartford-Empire Company.” This information was

fully as open an admission on Clarke’s part as the one he

made at the first interview with McCarthy on May 13
(R. 21) and refutes the insinuation that a promise of
money had induced him to change his attitude.

The circumstances of the publication of the Clarke |

article and its incidental citation in plaintiff’s brief on

verted into fraud by petitioner’s baseless characteriza-

.
appeal to the Court of Appeals in 1931 cannot be con-

tion of an event which occurred after the petitioner, with
full knowledge of what it now claims to be the material
facts (namely, that Hatch initially drafted the article
and Hartford arranged for its eee) settled its
controversy with the respondent.

The payments made to Clarke were lawful and

proper; were made years after Clarke and Hatch had 0
severally acknowledged Hatch’s initial authorship of ir
said article, and in no way prevented petitioner from 0
establishing the facts as to the original authorship of ti
the said Clarke article at, prior to or just after the deci- § P
sion of the court below, or at or prior to the trial of n
the Hazel infringement suit in the Distriet Court, had J
" petitioner elected to do so. tl
ti
Death of key witnesses during

period of Hazel’s inactivity g
By its long inaction, Hazel has deprived Hartford 1
of the testimony of at least three key witnesses Wil ;
liam R. Wood, William J. Belknap and Thomas G.. K
HFaight, all now dead. These men had personal kno l ts

edge of facts whose proof would be important; to Hart-
ford in rebutting any evidence which might be taken on :
behalf of Hazel. Therefore, Hazel’s inaction was not i
only lack of diligence. — _It was also laches. N *
Petitioner's laches and lack of diligence in present a
ing its evidence having been shown, the petition was :

rightly dismissed by the .court below, irrespective of
every other consideration in this case.

eI

Fourth Point

Petitioner is barred from seeking the relief for
hich it petitions, by its own election to settle its con-
oversy with respondent and to abide by that settle- |
ent so long as the settlement was profitable to it.

Without disclosing to the court below its knowledge |
the genesis of the Clarke article, petitioner entered
to an agreement with respondent which settled the
mtroversy between the parties and under which peti-
oner profited materially. Petitioner has now been de-
rived for the time being of its profits from the agree-
ent, but having for years elected to abide by the 1932
idgment in the Hazel infringement suit and to affirm
1e 1932 settlement based thereon, petitioner is not en-
tied to the relief it now belatedly seeks. a

The precise knowledge that petitioner had of the
enesis of the Clarke article and the circumstances sur-
dunding its publication, and the dates on which it ac-
uired such knowledge are set forth above under the
hird Point (supra, pp. 53-61). Notwithstanding that
nowledge, petitioner, without disclosing its information
the court below, or proceeding to take any steps to
ursue the inquiry, settled its controversy with respond-
nt cbefore the entry of that court’s judgment, took a
cense under numerous patents, including the patent in
uit, and agreed to pay royalties under the license. The
greement was, and is, terminable by petitioner at its
ption at any time upon six months’ notice. Petitioner
as never availed itself of this provision.

8

On May 9, 1941, the Distriet Court for the Western
Division ef the Northern District of Ohio during the trial
of an antitrust suit against respondent, petitioner and
others, impounded the moneys payable under the con-
tract by petitioner to respondent and by respondent to
petitioner. Except for the effect of the impounding order,
the agreement remains in full force and effect (R.
162-3). —

The payments made by respondent to petitioner be-
tween the date of the agreement and December 31, 1940
exceeded the payments made by petitioner to respondent
covering damages for infringement and N by
. $678, 422.26 (R. 162).

Petitioner, . by entering into the settlement agree-
ment with full knowledge or opportunity for knowledge
of the facts as to the preparation and publication of the
Clarke article, elected to stand upon the judgment of the
court below and upon the provisions of its contract.-

=a * * oie > clear that he cannot take the
benefits of that contract and repudiate its burdens. 2
McLean v. Clapp, 141 US. 429, 432. oo

“The power of avoidance for fraud or misrepresenta-
tion is lost, if the injured party after acquiring
knowledge of the fraud or misrepresentation mani-
fests to the other party to the transaction an inten-
tion to affirm it, or exercises dominion over things
restoration of which is a condition of his power. of
avoidance, except as stated in Section 482”. A. L. I.

- Restatement, Contracts, Section 484. (Section 482

—69—

is not in point because it deals only with offers of
return nene, ) .

80 in case of a transaction claimed to be voidable
for fraud, if the person defrauded with knowledge
affirms the contract either by suing on it or other-
wise, he cannot afterwards repudiate it
Nuveen v. Board of Public Instruction, 5 Cir., 88 F.
2d 175, 181.* )

“Silence, delay, acquiescence, or the use or retention
of any of the fruits of the contract for any consider-
able length of time after a discovery of the fraud .

is in itself an exercise of the option, and constitutes
a complete and irrevocable ratification of the trans-
action.” Wheeler v. McNeil, 8 Cir., 101 Fed. 685,
689. *

By hot exercising its option to cancel the agreement
pursuant to its terms and by accepting the large finan-
cial benefits of the agreement for nine years, petitioner |
has recurrently affirmed its election and cannot now re-
. pudiate it by * seeking to reopen the judgment.
below. ‘

— — —

* The case cited held there was ng election, but the
soundness of the proposition quotéd is unquestioned. -

* P /

1

Fifth Point

The court below correctly found that the alleged
fraud did not prevent petitioner from making a full and
fair defense. os <

The court below (Opinion, R. 223-4), after point-
ing out that petitioner did not deny the factual truth
of the Clarke article “in material part, namely, the as-
cendency of gob-feeders over stream feeders”, said that

‘““counsel for Hazel-Atlas recognized in April 1929
that the only statements in the Clarke article of
any possible pertinence were freely ad-
mitted by everyone concerned with a Hartford suit
as being incontrovertible. (See affidavit of Edmund

P. Wood, Esq.*) To be material, the fraud, where-

by a decree was allegedly obtained, must have pre-

vented the party complaining from making a full
and fair defense. Toledo Scale Co. v. Computing

Scale Co., 261 U.S. 399, 421.“

The leading case is U. S. v. Throckmorton, f 98 U.S. 61.
where this Court said (p. 65):

There are no maxims of the law more firmly estab-
lished, or of more value in the administration of
justice, than the two which are designed to prevent

repeated litigation between the same parties in re-
gard to the same subject of controversy; namely,

interest rei publicae, ut sit finis litium, and nemo
debet bis vexari pro una et eadam causa.” ;

.

R. p. 189. a

+ Cited recently in this Court’s opinion in Schnei-
derman v. United States, 320 U.S. 118, decided June 21,
1943 and cited also in Mr. Justice RUTLEDGE’S concurring
opinion in n the same case.

—
1 ~

This Court then held that a court of equity has the
power to set aside a judgment after the term of the
court in which it was entered upon the ground of fraud.
but only when “there was in fact no adversary trial or
decision of the issue in the case”, only where “the unsuc-
cessful party has been prevented from exhibiting fully
his case, by fraud or deception practiced on him by his
opponent”, and only where “there has never been a real
contest in the trial or hearing of the case”.

Petitioner contends (brief p. 31) that it was “pre-
vented ‘from exhibiting fully’ * * * its case” in the
Hazel infringement suit, but the fact is, as found by
the court below and as shown above (pp. 7-8, 55), that
‘petitioner, with full knowledge of the facts, decided at
the trial not to raise any question regarding the author-
ship of the Clarke article, feeling that to do so would
merely emphasize the truth of its statements, and so
prove a boomerang. Morever, neither in the proceedings ;
defore this Court nor in the proceedings in the court be-
| low has petitioner undertaken to specify any evidence,
relating to any issue in the infringement suit, which it
was “prevented from exhibiting fully”.

In the briefs in the court below, and in petitioner's
brief in this Court, there is some discussion of the dis-
tinction between “intrinsic fraud” and “extrinsic fraud”
and of the relation of the decisions of this Court in

This recognition by the Supreme Court in the
Throckmorton case of the power of a court of equity to

set aside a judgment after the term of its entry is not
in conflict with the line of cases as to termination of
appellate jurisdiction upon the expiration of the term,
cited under the First Point of this brief (pp. 25-8
supra). U. S. v. Throckmorton was an original bill,

| brought in a court of original jurisdiction.

* 0

—ta—

United States v. Throckmorton, supra and in Marshall
v. Holmes, 141 U.S. 589 to each other and to the case at
bar. It is unnecessary to corsider these questions, be-
cause the present case is ruled by the later decision of
this Court in Toledo Scale Co. v. Computing Scale Co.,

261 U.S. 399, 421 (1923) relied upon by the court below
in its opinion, where this Court said:

“There has been much discussion as to nen Og ex-
trinsic fraud is here alleged, and the case of United
States v. Throckmorton, 98 U.S. 61, is cited and
numerous other authorities since that case. We do
not find ourselves obliged to enter upon a considera-
tion of the sometimes nice distinctions made be-
- tween intrinsic and extrinsic frauds: in the applica-
tion of: the rule, because in any case to justify set-
ting aside a decree for fraud whether extrinsic or
intrinsic, it must appear that te fraud ‘charged
really pr

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0011%3A07. Public record. Not legal advice.