On Petition for Rehearing.
On the merits we see nothing to add to what we have already said except as to Horton's patent, 1,407,416, which we dismissed by saying merely that it added nothing to the others. In February, 1915, Sachs had completed drawings of the invention which later appeared in patent No. 1,292,081, and these he put in proof. They bear the date, were properly authenticated, and are unimpeachable as evidence. They antedate Horton's application, which was filed on March 24, 1915, though Sachs' model was completed later. Indeed, his drawing of December, 1914, would probably have been enough alone. Unless Sachs unreasonably delayed the prosecution of his application, this proof was enough. Automatic, etc., Co. v. Pneumatic Scale Corporation, 166 F. 288 (C.C.A. 1). That is a matter which must be pleaded by special notice (U.S. Code Tit. 35, § 69 [35 USCA § 69]), and the answers do not contain anything of the sort. It has not been argued before us, and, so far as we can see, it was not mooted at the trial. We decline to consider it.
However, we did not dispose of the question of costs.Three suits were before us; No. 1911, against the Hartford Electric Supply Company on patent 1,292,081, and patent 1,301,175; No. 1912, against the Service Electrical Supply Company, on patent, 1,292,081, and patent 1,294,176; No. 1913, against the Union Light Company on patent 1,292,081, and patent 1,294,176. Pending the suits the plaintiff filed disclaimers in the District Court as to certain claims in 1,301,175 and 1,292,081, but not as to 1,294,176. The plaintiff succeeded in the District Court in No. 1911 as to 1,301,175, but failed as to 1,292,081, and was awarded no costs. Both sides appealed, and we have affirmed the decree as to 1,301,175, and reversed it as to 1,292,081. By the weight of authority, the plaintiff should be allowed its costs in this court. Kahn v. Starrels, 136 F. 597 (C.C.A. 3); Johnson v. Foos Mfg. Co., 141 F. 73, 89 (C.C.A. 6); Excelsior, etc., Co. v. Williamson, etc., Co., 269 F. 614, 619 (C.C.A. 6); Bankers' Utilities Co. v. Pac. Bank, 22 F.2d 680 (C.C.A. 9); Excelsior, etc., Co. v. Meyer, 36 F.2d 447, 450 (C.C.A. 7). The Third Circuit decided to the contrary in Novelty Glass Co. v. Brookfield, 172 F. 221, but without notice of its earlier decision in Kahn v. Starrels, supra. The situation may be different, when the disclaimer is made of a claim first held invalid upon appeal. Liquid Carbonic Co. v. Gilchrist Co., 253 F. 54, 58, 59 (C.C.A. 7).
This seems to us in principle correct, because the plaintiff, having put itself in the District Court in a position to demand a decree upon both patents, was forced to prosecute its appeal as to patent 1,292,081, and defend the defendant's appeal as to patent 1,301,175, in order to secure and defend its rights. The claims in suit were free from invalidity after the disclaimer, though invalid when the suit was brought, because of the matter disclaimed. There is no reason why the mistake so corrected should any longer deprive it of re-imbursement for the necessary costs of maintaining its position; and the statute does not demand so much. We allow to it the costs in this court; it will take no costs in the District Court.
In No. 1912 the plaintiff succeeded on the appeal as to patent 1,292,081, but failed as to patent 1,294,176. There should therefore be no costs of this appeal. The defendant should have costs in the District Court; this because the plaintiff could not in any event have costs in that court as to patent 1,292,081, and because the defendant has succeeded as to patent 1,294,176.The plaintiff's success as to patent 1,292,081 should not offset the defendant's as to patent 1,294,176, in view of its commencement of the suit as to patent 1,292,081, at a time when strictly it was not entitled to sue upon that patent; the claims in suit being invalid without disclaimer.
The same disposition should be made of No. 1913.
Settle mandate in accordance with the foregoing.