Before BIGGS, MARIS, CLARK, and JONES, Circuit judges.
Hazel-Atlas Glass Company and Shawkee Manufacturing Company, defendants respectively in the above-entitled suits, each filed a petition in this court for leave to file a bill of review in the District Court in respect of the final decrees severally entered therein. The petitions alleged in substantial part that a fraud had been practiced upon this court in connection with the appeal in the Hazel-Atlas case and that it had induced this court's order (59 F.2d 399, 413) reversing the decree of the District Court in that case (39 F.2d 111, 120). The decision in the Hazel-Atlas case in turn compelled the decree of the District Court in Hartford-Empire's favor in its suit against Shawkee and others which on appeal was affirmed by this court. See Shawkee Mfg. Co. et al. v. Hartford-Empire Co., 3 Cir., 68 F.2d 726.
As the petitions relied solely upon the fraud allegedly practiced upon this court and set forth nothing appropriate for the District Court's inquiry upon bills of review in respect of the subject-matter of the suits in that court, leave to file the bills below was accordingly denied. However, adopting by analogy the procedure followed in the cases of Art Metal Works v. Abraham & Straus, Inc., 2 Cir., 107 F.2d 940, and Id., 2 Cir., 107 F.2d 944, certiorari denied 308 U.S. 621, 60 S. Ct. 293, 84 L. Ed. 518, we granted leave to the petitioners to amend the prayers of their respective petitions so as to seek relief from this court, on the ground of the alleged fraud, against the orders heretofore entered in the above appeals. See 3 Cir., 125 F.2d 976, 977. The petitions were amended accordingly and, as so amended, are now before us.
In 1928 the Hartford-Empire Company sued the Hazel-Atlas Glass Company in the District Court for the Western District of Pennsylvania for the alleged infringement by Hazel-Atlas of Hartford-Empire's patent (No. 1,665,391), known as the Peiler patent. The District Court, deeming the patent to ge at best but a slight improvement in a well developed art (automatic feeders for mechanical glass bottle blowing), held that the claims were not entitled to a broad construction and that, with the Peiler patent so construed, Hazel-Atlas had not infringed. 39 F.2d 111. On appeal this court (one judge dissenting) considered Peiler a pioneer in what was thought to be a meagre art in the glassblowing industry and that the claims of the patent were therefore entitled to a broad construction. So construed, the validity of the patent was sustained and Hazel-Atlas was hedl to have infringed the forty-four claims (out of the sixty of the patent in suit) upon which the plaintiff relied. The decree of the District Court was accordingly reversed (59 F.2d 399, 413) and the record remanded "with instructions to enter a decree holding the plaintiff's patent valid and the claims sued on infringed, and directing an accounting."
The opinion for the majority in support of the order thus entered by this court made frequent references to and quoted extensively from an article in a trade journal known as the National Glass Budget. The article purported to be the work of one William P. Clarke, who had signed it as author, and was titled, - "Introduction of Automatic Glass Machinery; How Received by Organized Labor - By William P. Clarke, President, American Flint Glass Workers Union." After alluding to the historic opposition of glass workers to mechanical glass-blowing applicances, the so-called Clarke articles went on to show that, prior to gob-feeders, the only successful automatic feeder for a glass-blowing machine had been that covered by the Owens patent, which, like another patent (Brooke), operated on the principle of stream feed into a mold (the former by suction and the latter by flow) of molten glass of high temperature and low viscosity, unlike the automatic plunger gob-feeder (Peiler's patent). Appended to the article was a chart purporting to show the ascending curve of the increased glass bottle production from the use of gob-feeders from 1917 onward, and the almost concomitant flattening of the production curve of manufacture under the Owens patent which, up to that time, had increased both continuously and regularly. The Clarke article, which had not been introduced in evidence in Hartford's suit against Hazel-Atlas, got into the record merely as a part of the voluminous file-wrapper history of the Peiler patent in its long and precarious course in the Patent Office. Neither had it been used nor adverted to at trial; nor was it referred to in the briefs below nor in the exhaustive opinion of the trial judge.
The fact is that the article had not been written by Clarke, but by one R. F. Hatch, an attorney in the patent department of Hartford, which by that time had become the assignee of the Peiler Patent application. Hatch not only prepared the article and its accompanying chart but he also procured Clarke's signature thereto as the author, and caused it to be published in the National Glass Budget with the understandings, assented to by the publisher, that Hartford should not be connected with it. The article appeared in the July 17, 1926 issue of the National Glass Budget. R. D. Brown, Vice-President and Patent Counsel of Hartford, and V. M. Dorsey, a patent attorney for Hartford, brought the published article to the attention of the Patent Office on October 12, 19268 with special reference to the Peiler application (Serial No. 294,792), whereon the patent (No. 1,665,391) issued on January 3, 1928.
It is unnecessary for present purposes to relate in detail how Hatch, aided and abetted by Brown and Dorsey as well as by H. W. Carter, of Owens Bottle Company,*fn1 deliberately set about "to get the production curve and a few statements in regard to gob feeding into print" (from a source ostensibly hostile to labor-saving glassblowing machinery) for use in the Patent Office in connection with the Peiler application which had already been rejected on the ground that its claims were not patentable. As the matter then stood, the Peiler application was confronted with apparently insurmountable Patent Office opposition. That Hatch, Hartford's employee, and not Clarke, the labor leader, wrote the article and that the purpose of the methods employed in having it published was as above indicated may now be taken as indisputably established. But, sordid as is the story concerning the genesis of the Clarke article and the deceptive design and use of its spurious authorship, still it does not qualify as after-discovered evidence in either the Hazel-Atlas or the Shawkee suit.
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. Although then so informed, counsel for Hazel-Atlas deliberately chose not to go into the matter of the article's real authorship, fearing 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 affidavit of Edmund P. Wood, Esq., of Cincinnati, whom both sides accredit.) There is no need to burden this opinion with a detailed recital of how Mr. Wood and his father and former senior partner, William R. Wood, Esq., came by their information. They were counsel for the Nivison-Weiskopf Company which was also sued by Hartford for alleged patent infringement. Hartford-Empire Co. v. Nivision-Weiskopf Co., 6 Cir., 58 F.2d 701. That suit came on for trial in the District Court for the Southern District of Ohio shortly after the trial of the Hazel-Atlas case in Pittsburgh, which the Messrs. Wood had alternately attended from time to time. Suffice it to say that Clarke had told William R. Wood in September 1926 that he had not written the article but that Hatch had; and Hatch had freely admitted to Edmund P. Wood in February 1928 that he had written the article.It was this information which the Messrs. Wood imparted to counsel for Hazel-Atlas as the time of the trial of Hartford's suit against Hazel-Atlas in April, 1929.
In their brief on appeal to this court in the Hazel-Atlas case, counsel for Hartford, the appellant, cited and made reference to the Clarke article and its appended chart, which they reproduced in their brief, in support of the assertion that "It [the Peiler plunger feeder] Broke the Owens Domination". The only response made to this by counsel for Hazel-Atlas in their brief for the appellee was that the chart was misleading because "the curve for 'gob feeders' starts with the year 1917" whereas Hartford's "paddle feeeder [which it asserts was a gob feeder] went into commercial use in 1915"; that whatever portion of the gob-feeder production shown by the chart up to 1922 was made by plunger feeders "was made on plunger feeders developed by others, for plaintiff's [Hartford's] first plunger feeder was November, 1922"; and, finally, that the chart "is not competent evidence against the defendant, being merely part of ex parte statements made in plaintiff's [Hartford's] behalf during the Patent Office proceedings." Nowhere did the brief of counsel for Hazel-Atlas suggest what they then knew, viz., that Hatch had written the Clarke article.
When the importance which the majority of this court attached to the merit of the Clarke article was revealed by the opinion filed on May 5, 1932, in the Hazel-Atlas case, counsel for Hazel-Atlas shortly thereafter obtained affidavits from the Messrs. Wood definitely attributing authorship of the Clarke article to Hatch on the say-so of both Clarke and Hatch. They also caused Clarke to be interviewed by an investigator. While Clarke lamely reaffirmed that he had written the article, a reading of the investigator's report serves to indicate that Clarke's renewed claim to authorship, in its cautiously phrased assertions, was lacking in truth. Yet, within approximately ten days after the investigation had been begun it was abandoned without any attempt to interview Hatch who, according to William R. Wood's accredited affidavit, "had no hesitation in admitting the circumstances" concerning the authorship of the Clarke article as Wood had related them. Nor were the affidavits of the Messrs. Wood, which are now urged upon us, brought to the attention of the court which had just lately heard and disposed of the appeal in the Hazel-Atlas case. In short, Hazel-Atlas made no timely representations to this court concerning the Clarke article. Furthermore, and notwithstanding that Judge Woolley had entered a strong dissent, no petition for rehearing was filed even to the extent of suggesting that the majority of the court had erroneously considered and reasoned from matter which undeniably was not evidence in the case. The failure to file a petition for rehearing was especially notable. Upon stipulation of the parties, the court on five separate occasions had granted an extension of the time for the filing of a petition for rehearing, the last of these extensions expiring on July 29, 1932. Nor was certiorari asked for. The reason for Hazel-Atlas' uncomplaining and inactive course in the circumstances shown is not far to seek. On July 21, 1932 (as of July 1, 1932) Hazel-Atlas entered into a settlement and cross-licensing agreement with Hartford.
In view of the foregoing, it is hardly accurate to suggest, if that be the suggestion, that Hazel-Atlas did not know until the disclosures in 1941 in the anti-trust suit of the United States against Hartford-Empire Company and eleven other corporate defendants including Hazel-Atlas in the United States District Court for the Northern District of Ohio that it was Hatch and not Clarke who had written the Clarke article.*fn2 And the same can be said for Shawkee, the only difference being that Shawkee brought to the attention of the court forthwith, at the time of its pending appeal, its lately acquired information concerning the Clarke article, in the manner and with the result as will now appear.
Hartford's suit against Shawkee and several other defendants for alleged infringement of the Peiler patent was instituted in the District Court for the Western District of Pennsylvania on May 31, 1933. The matter was brought before the court promptly on the plaintiff's motion for a preliminary injunction and the defendants' motion in opposition thereto, together with supporting affidavits for the respective parties. On June 27, 1933, the District Court filed an opinion and decree awarding the plaintiff a preliminary injunction from which the defendants immediately appealed. The appeal was argued on October 3, 1933, before this court, composed of the same judges who had sat for the argument and disposition of Hartford's appeal in the Hazel-Atlas case. l
On October 30, 1933, whiel the appeal in the Shawkee case was under advisement Otto R. Barnett, Esq., of counsel for Shawkee, with notice to Thomas G. Haight, Esq., of counsel for Hartford, wrote to Judge Buffington submitting therewith certain copies of papers said to show that " * * * the Clarke article was printed at the instigation of the Hartford-Empire Company, through one of its attorneys, R. F. Hatch * * * ." In his letter to Judge Buffington, Mr. Barnett called attention to the weight given by this court in its decision in the Hazel-Atlas case " * * * to certain publications, including a published article purported to have been written by William P. Glass Workers Union, paying tribute to the Peiler invention." On November 3, 1933, Mr. Haight replied to Mr. Barnett's letter by letter also addressed to Judge Buffington, whereof a copy was sent to Mr. Barnett. That the information respecting the Clarke article, thus imparted to Judge Buffington, came to the attention of the full court is evident from Mr. Haight's letter wherein he states that "Three copies of this letter, in accordance with the suggestion which you made in open Court yesterday, are enclosed herewith." The court on November 2, 1933 (the "yesterday" just referred to) was composed of the same three judges who had heard both the Hazel-Atlas and the Shawkee cases. And Mr. Barnett, in expressed compliance with the suggestion of the court, as disclosed by Mr Haight's letter, sent Judge Buffington on November 6, 1933, two additional copies of his communication of October 30, 1933. Thereafter Mr. Barnett addressed several more letters to Judge Buffington relative to the matter of the Clarke article, stating in his letter of December 16, 1933, that the correspondence submitted " * * * clearly shows that the publication of this [Clarke] article in the Glass Budget was instigated by the ingenious brain of Mr. Hatch, one of the plaintiff's [Hartford's] attorneys * * * ."
Subsequently, viz., on January 11, 1934, this court handed down its decision affirming the decree in the Shawkee case. Shawkee petitioned for a rehearing, which was denied on February 21, 1934. Certiorari was thereafter asked for and denied, 292 U.S. 640, 54 S. Ct. 773, 78 L. Ed. 1492, as was also a subsequent petition for certiorari, 293 U.S. 600, 55 S. Ct. 117, 79 L. Ed. 693. In its petition to this court for a rehearing, Shawkee had again set forth " * * * that the [Clarke] article was a publication instigated by the plaintiff [Hartford] and published at the plaintiff's urgent request * * * ." There can be no doubt that the matter received the attention of all of the members of the court which had heard the Shawkee, as well as the Hazel-Atlas case. So much for Shawkee's knowledge respecting the Clarke article as long ago as 1933, while the original appeal in the Shawkee case was still pending in this court. In 1935 Shawkee sought this court's leave to file a bill in the nature of a bill of review, which was refused, and again in 1938 sought this ...