Cover v. Schwartz ( 1942 )

CLARK, Circuit Judge

(dissenting in part).

I can see no reason for the dismissal of the appeal as to Patent No. 2,000,064. True, the matter may not be of vital importance to the parties if, as' the opinion indicates and I believe, the judgment below was correct. The parties then have the unsatisfying result that decision upon the issue they have thoroughly briefed and argued, the only issue adjudicated below, has been avoided by the court for a procedural nicety, which, had the plaintiff been gifted with unusual vision, he would have avoided by the change of a word or two in his brief. But the defendant still has the judgment to which I think him entitled, although buttressed only by the vote of one judge, not four. If, however, the judgment was erroneous, then a grievous injustice is being done the plaintiff for this very minor fault —one which I certainly cannot condemn him for overlooking, since even now I am not reconciled to viewing it as a fault.

But for the court the matter is in any event of different stature. By its resort to the hallowed constitutional words “case or controversy,” a minority of the entire court is attempting to bind the court in futuro from doing what it thinks just for either party, whenever this fault is repeated by one party only. Clearly, in the light of the authorities and the federal rules of civil procedure, this is not a decision compelled by something outside the court;¹ it represents a purely human choice, and must go back to some felt demand of policy — though all arguments of policy seem to me to press to the contrary conclusion. I am clear that it is at best an unnecessary result; to copper-rivet it in terms of jurisdiction seems to me an undesirable argumentative technique, as well as peculiarly unfortunate in forcing the court into a juristic straitjacket.

First, I think it desirable to consider the actual situation before the court a little more closely. Had the case been exactly as stated in the opinion,' I should still think that the matter was in all respects properly before our court for such disposition as we saw fit, and that dismissal, if we chose that course, would be only an exercise of discretion. Cf. Federal Land Bank of Springfield v. Hansen, 2 Cir., 113 F.2d 82, 84, 85. For the federal rules intentionally did away with the mummery of assignments of error, Committee’s Note to Rule 73(b); Hearings before House Committee on the Judiciary on Rules of Civil Procedure, 75th Cong., 3d Sess., March 4, 1938, Serial 17, pp. 128, 129, and the notice of appeal here brought the decree in question before us.² Then, under In re Barnett, 2 Cir., 124 F.2d 1005, one of the parties could not take it away from us; that there it was the intentional attempt of the appellee, while here it is the inadvertence of the appellant, is, if anything, a stronger reason for the application here of the principle and the analogy there resorted to of the dismissal rule in the district courts. Federal Rules of Civil Procedure, rule 41, 28 U.S.C.A. following section 723c. It surely is anomalous to bring back the outlawed assignments of error as a part of appellant’s brief or appellant’s oral argument.

But the case is somewhat different from that stated in the opinion. Here plaintiff brought his action in usual form (Federal Form 16) asking for an injunction, an accounting for profits and damages, and costs. Defendant by precise and detailed allegations in his answer attacked both the validity of the patent and the claim of infringement. Both these issues were spiritedly contested at the trial; in fact, plaintiff introduced at least three devices, conceded to be made and sold by defendant, for the sole purpose of showing infringement under this patent. (The unreality of the result herein is accentuated by the narrowness of the distinction between lack of novelty of an idea broadly stated in the patent claims and the usual alternative of non-infringement-of a patent rigidly limited in scope to save its validity; in practical effect these are but different legal conclusions, or explanations of a result, deduced from the same basic facts. See Hazeltine Corp. v. Emerson Television-Radio, Inc., 2 Cir., 129 F.2d 580, 582.) The court, however, found only invalidity.³ It would seem rather natural for the plaintiff to concentrate his appeal on that issue; demonstration of eri'or there was basic to his case and, if achieved, would require a reversal and remand, since the finding attacked was the foundation of the judgment.

I find no concession which goes at all beyond these natural circumstances of the case, or is anything more than an attempt, which we really ought to praise, to limit the appeal to the essential matter. As appellant puts it, he “is not appealing from that part of the judgment which [as he erroneously assumes] holds the claims not infringed.” Under the circumstances, including defendant’s admitted devices introduced in evidence below and his continued all-out attack, even to this court, on plaintiff’s claims on all grounds, including infringement, of course plaintiff could appeal on all grounds by just saying so, as the opinion concedes he did originally. It seems to me, therefore, rather a distortion of the plain facts before us to hold plaintiff tied to the concession, that is, that legal theory, which we now attribute to his counsel, that defendant does not even threaten future infringement. And we say that when actually the parties are fighting tooth and nail over what in final analysis and however described are competing devices!

Next, even if plaintiff could and did concede away his appeal as to infringement— propositions, as we have seen, most doubtful — and if, therefore, he was seeking only a declaration of validity as to his patent, I cannot see why jurisdiction to make or to review a declaration was lacking. His prayers for relief below, of course, do not bind him after issue joined; he should be granted any relief to which the facts show he is entitled. Federal Rules of Civil Procedure, rule 54(c). The suggestion that he must show infringement, i.e., breach of duty, before he can get such declaratory relief is opposed to the major purpose of the remedy to enable a party to know his rights before he seeks consequential relief. The Supreme Court has now thoroughly repudiated the idea that this worth-while form of action does not present a case or controversy. Nashville, Chattanooga & St. Louis R. v. Wallace, 288 U.S. 249, 53 S.Ct. 345, 77 L.Ed. 730, 87 A.L.R. 1191; Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 57 S.Ct. 461, 81 L.Ed. 617. And on this particular issue Professor Borchard’s arguments and authorities that validity of an instrument may be tested without proof of its breach appear unanswerable. Borchard, Declaratory Judgments, 2d Ed.1941, 505 (contracts), 563 (deeds, etc.), 591 (mortgages), 606 (leases), 638 (insurance policies), 802, 808 (patents). Of course it is true, though not very relevant, that a plaintiff cannot get a declaration against a purely fictitious John Doe or a defendant who is a mere uninterested bystander. For that certainly is far from the present case, where the defendant is making the strongest possible adverse claim against the plaintiff — that plaintiff’s patent is wholly void— in the most definite way possible, namely, a spirited and successful assertion of that fact in court. To say that when, in such case, plaintiff attempts to get a binding declaration against defendant of the invalidity of defendant’s claim there is no “controversy” before the court, but only a request for an “advisory opinion,” is to wrest these terms from their natural meaning, quite contrary to the whole trend of modern decisions.

But, after all, if I am correct that the proper judgment here is affirmance, it is the defendant who may be most harmed and whose interests must be carefully considered. And that brings us to the final anomaly which has been developed in this case, namely, that while we are ousted of any jurisdiction in the matter by the plaintiff’s unnecessary concession, yet we still have discretion to preserve enough of the judgment to afford some protection to defendant. If we have that much discretion, why have we not enough to go on to do a complete job, as defendant asks? What he wants, and all he wants, is decision on the merits; indeed, he will probably be as surprised as anyone else at the result reached. But the cold logic, upon which the opinion purports to go, would nevertheless require dismissal of the entire action as moot. This, I take it, the opinion in substance admits, as its citations indicate.⁴

Now, of course, dismissal of the action would be such a trap for the defendant— and so fine an opportunity generally for a defeated plaintiff to get away from the burden of an adverse judgment — that such a result is really unthinkable. Defendant clearly could himself have sought a declaratory judgment initially, Borchard, Declaratory Judgments, 2d Ed.1941, 804, 808; 45 Yale L.J. 160; Lances v. Letz, 2 Cir., 115 F.2d 916; and the trend of the authorities now is that he could counterclaim for that remedy in this action, at least until and unless it appeared that decision of the plaintiff’s claim would afford him quite complete relief. See Leach v. Ross Heater & Manufacturing Co., 2 Cir., 104 F.2d 88; Dominion Electrical Mfg. Co. v. Edwin L. Wiegand Co., 6 Cir., 126 F.2d 172; O’Leary v. Liggett Drug Co., D.C.S.D.Ohio, 1 F.R.D. 272; Benz v. J. Laskin & Sons Corp., D.C.E.D.Wis., 43 F.Supp. 799, 801, citing cases; Borchard, Declaratory Judgments, 2d Ed.1941, 814; 2 Federal Rules Service 646; 3 Federal Rules Service 687. Here defendant actually filed a counterclaim upon some patents of his own and prayed not only for relief upon them, but also for “such other and further relief” as would seem to the Court just and proper, as well as for dismissal of the complaint with costs.⁵ But his answer, with its several paragraphs of allegations of invalidity of the plaintiff’s patent, surely raised the issue and, under Rule 41(a) (2), should prevent a dismissal which would leave his defense unadjudicated. What more could he have done? Had he attempted to appeal from the favorable judgment, we would certainly have given him short shrift, indeed. But how could he have foreseen this result even enough to think of making such an attempt? The defendant, who presented his own appeal, is a layman; even a “Philadelphia lawyer” could not be held to that degree of foresight. And we can see how real is his danger when we note how narrowly the opinion averts dismissal of the entire action — because, notwithstanding our lack of jurisdiction, the result would be unfair to one of the parties. The hurdles necessary to this result suggest that perhaps the fallacy is in the first step, and that, after all, as the federal rules so clearly intend, the simple process of appeal of Rule 75(a) does operate to carry the case before the reviewing court for its, and not the parties’, disposal.

Hence there seem to me several approaches — all leading legally and logically to the same end, which is the one clearly required by any concept of a judicial obligation to hear and determine causes. And I am unable to isolate any reason to the contrary. The opinion does not suggest any, further than the barren resort to the constitutional phrase, pressed beyond the precedents. True, there have been suggestions (cf. dissent in In re Barnett, supra) of the desirability of confining our decisions to disputes actually before the court; and as a general proposition, I, of course, thoroughly agree. But a particular case cannot be decided on abstract propositions; we must meet particular issues with such common sense, as well as legal learning, as we can summon to the task.⁶ I venture to believe, however, that there is another general principle which should also .guide our steps, namely, that the pain of decision should not be avoided by reliance on some procedural technicality. That — as any law school case book on procedure⁷ demonstrates — has caused so much trouble, not merely to litigants, but — since the other is not enough to persuade us — to courts themselves in their later decisions, that the necessity of procedural reform is everywhere recognized. An inadvertently volunteered dicturn is soon forgotten; a procedural restriction, frozen in by resort to the Constitution, cannot be.

1 The only case specifically relied on, Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263, is actually authority for extension, not contraction, of jurisdiction on appeal. That is why the decision below, denying jurisdiction, 2 Cir., 100 F.2d 403, was reversed. And see Borchard, Declaratory Judgments, 2d Ed. 1941, 815. In United Carbon Co. v. Binney & Smith Co., 63 S.Ct. 165, 87 L.Ed. —, the Court held the patent invalid, without passing on infringement (held unproved by the District Court, reversed by the Circuit Court of Appeals).

2 This was made the clearer, as the opinion concedes, by plaintiff’s “Statement of Points” — though, of course, these are only for the purpose of informing defendant how he should have the record made up. Federal Rules of Civil Procedure, rule 75(a).

3 Four times: expressly in its memorandum of decision, its conclusions of law, the judgment, and, inferentially, in its finding of facts. Any intimation of a finding of infringement is, indeed, faint; it seems confined to the careless use of the word “also” before the finding of invalidity stated in the memorandum of decision. But the context, as well as the other uses made of “also,” shows that the judge was in each ease merely holding another of the several patents before Mm “invalid for lack of invention,” not finding non-infringement.

4 And hence we at least — and perhaps also the district court — lose jurisdiction by pressing counsel at the argument of the appeal to the point of admitting the weakness of his position. Judges should take note of the possible danger to their functioning involved in questioning counsel.

5 At an early stage of this appeal we granted plaintiff’s motion to exclude the counterclaim from .the printed record on appeal, over the strenuous objection of the defendant that it was a part of his defense. Had we foreseen this present development, we would hardly have made this attempt to save printing expense for the parties.

6 It should be noted that the result here, being based on jurisdictional and constitutional grounds, is much more serious than that criticized in the concurring opinion in Aero Spark Plug Co. v. B. G. Corp., 2 Cir., 130 F.2d 290, for there the court chose merely to place its decision of affirmance on one only of the two grounds available to it. See 11 Geo. Wash. L. Rev. 121.

7 Collecting “horrible examples * * * of waste motion in the legal process.” Brandis, 11 Fordham L.Rev. 122, reviewing Clark’s Cases on Pleading and Procedure, 2d Ed. 1940.