#### MUNICIPAL SIGNAL CO. v. GAMEWELL FIRE-ALARM TEL. CO. et al.

(Circuit Court, D. Massachusetts.

December 8, 1896.)

No. 66.

Pleading in Patent Cases — Supplemental Bill in the Nature of Bill of Review — Newly-Discovered Evidence.

After the affirmance, on appeal, of an interlocutory decree for injunction and accounting, the defendant, by leave of the appellate court, applied to the circuit court for leave to file a supplemental bill in the nature of a bill of review, based upon newly-discovered evidence. The new evidence related to a device which had been set up as anticipatory at the original hearing. The court had then overruled the defense based thereon, not because it would not have been an anticipation, but because tbe proof of its existence and use was insufficient. The new evidence strongly tended to show a complete commercial use at a time and placo designated, and that defendant had used due diligence before tbe original hearing to discover the circumstances of such use, hut had been prevented therefrom by tbe machinations of defendant. *Held*that, under these peculiar circumstances, the pleading might he filed.

Tbis was a suit in equity by tbe Municipal Signal Company against tbe Gamewell Fire-Alarm Telegraph Company and others for alleged infringement of letters patent Nos. 359,687 and 359,688, granted March 22, 1887, to B. J. Noyes, for improvements in municipal signal apparatus. In August, 1892, after a bearing on tbe pleadings and proofs, tbis court entered an interlocutory decree for injunction and account. 52 Fed. 464. From tbis decree defendants appealed to tbe circuit court of appeals, which, on April 11, 1894, affirmed tbe same. 10 C. C. A. 184, 61 Fed.'949. After tbe going down of tbe mandate, no steps were taken by complainant to have an accounting, and on June 12,1895, defendants filed in tbis court a petition for rehearing, and for leave to file a supplemental bill in the nature of a bill of review, based on alleged newly-discovered evidence. This petition was denied by tbis court for want of power, in tbe absence of any permission reserved in tbe mandate of the circuit court of appeals. Thereafter a petition was presented to tbe circuit court of appeals asking leave to file in tbis court tbe said supplemental bill in tbe nature of a bill of review. Tbe circuit court of appeals, after a full bearing upon tbe petition, entered a decree merely authorizing tbe defendants to present a petition to tbis court for leave to file such bill. 20 C. C. A. Ill, 73 Fed. 908. Such petition has accordingly been presented to tbis court, and supported by affidavits.

The order made by the circuit court of appeals, authorizing the present proceeding in this court, limited the scope of the proposed supplemental bill in tbe nature *453of a Lili of review to presenting alleged newly-discovered evidence in relation to a certain alleged anticipatory device known as the “Wood Signal Box.” In relation to this device the petition and affidavit show that the same was set up and was considered at the original hearing in (his court, and also at the hearing on appeal in the circuit court of appeals, and that the defense based upon it was overruled, not because it would not have been an anticipation, but because the proof of its existence and use was not sufficient. It was also further shown that, after these decisions, defendant discovered iliat. the Wood signal box had in fact been for a time in actual use for business purposes in Kansas City, Mo., long prior to the application for the patents in suit; that, before the original hearing in this court, defendant had received an information in regard to such use, and had written a letter to one of the officers of the company which was said to have had the Wood device in use at that place, inquiring into the matter, but had received an unsatisfactory and evasive reply, and that it again addressed a communication to him, but received no response; that it had subsequently discovered that the reason its investigations had come to naught was due to the machinations of complainant, which, it was alleged, had sent an agent to Kansas City, and had there discovered one of the signal boxes there used, and had taken the same into its possession, or of some person connected with it; that for the purpose of concealing it, and preventing the knowledge of its use from coining to defendant, tlie complainant, through its agent, paid, to the persons from whom the box was obtained, a retainer, and renewed the same until after the decisions in this court and in the circuir court of appeals; and that by reason thereof defendant was unable at an earlier date to discover the facts in regard to the use. in Kansas City.

Lange & Roberts, for complainant.

Dyer & Driscoll, for defendants.

COLT. Circuit Judge.

Upon defendants’ petition in this case, filed in the circuit court of appeals, for leave to file supplemental bill in the nature of a bill of review, the court, at tlie close of its opinion, said:

> "We determine only ilia! the petii¡oners may have permission to apply t.o the conn below for leave to lili' their bill stated in die petition, first striking from it. all alleged newly-discovered evidence except that which «dates to the Wood device."

> In tin* course of its opinion (ho court said:

> “Anticipatory matters alleged to be newly discovered are rarely accepted as the basis of proceedings of this charaeier; but tlie cireumstanees appearing on the face of the petition are so peculiar that it seems to ns that, if the petitioners satisfy the court below that they have not been guilty of laches, there would be a reasonable probability that tlie new proofs, if they sustain tlie allegations of tlie petition, would require reconsideration from us if the case should come here again.” 20 C. C. A. 111, 73 Fed. 908.

The supplemental bill which the defendants now ask leave to file is limited to the alleged newly-discovered evidence relating to the Wood device. Upon careful examination of the petition, affidavits, and briefs of counsel, I am of the opinion that: (he defendants should have leave to lib» this supplemental bill in the nature of a bill of review. Under the peculiar circumstances disclosed in the affidavits, T. do not flunk the defendants are chargeable with such laches as should bar them from filing (his bill. Without in any way passing upon the effect of tin1 alleged newly-discovered evidence, it seems to in(> to be of such a character as entitles the defendants to a reconsideration by the court of the decree already entered. Petition granted.