On Petitions for Rehearing.
The petitions for rehearing in each of these cases reiterate arguments strongly urged at the hearing and decided mainly upon the basis of concurrent findings of the Master and of the District Court in light of the applicable law.
It would serve no useful purpose to grant rehearing in either appeal, or again to detail the voluminous evidence presented before the Master and before the District Court in this controversy, which has been pending in the courts since 1942.
In light of the confusion in the record as to the Cold Metal cases litigated in the Third Circuit, adverted to and criticized by that court in its recent decision, Cold Metal Process Co. v. United Engineering & Foundry Co., 3 Cir., 190 F.2d 217, 218, Note 4, and 219, Notes 6 and 8, we make one further comment upon the contentions of Cold Metal here repeated. Cold Metal again argues that United first asserted rights under Patent ’016 in 1949, that other courts have decided counter to our holding, and that United therefore obtained no rights under ’016.
The District Court concluded, we think correctly, that in none of the prior litigation between Cold Metal and United was it ever adjudged that United did not acquire immunity under ’016 through the license agreement. In 1931, No. 2,506, Cold Metal sued United in the United States District Court for the Western District of Pennsylvania for infringement of the '195 patent. United defended upon the ground, among others, that it was immune from any charge of infringement by virtue of the 1927 license agreement. Cold Metal Process Co. v. United Engineering & Foundry Co., 3 F.Supp. 120, 130. The court held Patent ’195 valid and United immune from liability because of the license provided for under the agreement of June 20, 1927, 3 F.Supp. 120, 131. An appeal taken to the Third Circuit Court of Appeals was dismissed, 68 F.2d 564. In a later case also adjudicated in the Western District of Pennsylvania, 9 F.Supp. 994, Cold Metal Process Co. v. United Engineering & Foundry Co., United vigorously pleaded its right as exclusive licensee under Patent 195, the only *848patent there involved. This suit was resolved in favor of United, but the decision was reversed, 3 Cir., 79 F.2d 666, upon the ground that no. present license existed. The Third Circuit in 190 F.2d 217 called this decision in 79 F.2d 666 erroneous. In a note, 190 F.2d 217, 221, Note 17, the court stated: “Cold Metal seems to take the position, contrary to fact, that in No. 2991 United did not assert its rights under the 1927 agreement and that it should have done so * * * . To state Cold Metal’s position is to refute it, for- * * * the very subject matter of the suit at No. 2991 was the rights of Cold Metal and United (and hence of their respective licensees and vendees) under the 1927 agreement. Both sides hotly pursued their contentions in that litigation.”
The somewhat loose statement made in a previous Third Circuit decision, Cold Metal Process Co. v. United Engineering & Foundry Co., 107 F.2d 27, 30, to the effect that United appeared to be interested only in Steckel Patent ’195 is deprived of force by another statement of the Third Circuit in 190 F.2d 217, 221, Note 17. It points out that between May 11, 1936, when Cold Metal filed its supplemental bill of complaint in No. 2991, and June 15, 1939, when the Third Circuit in 107 F.2d 27 affirmed the decree in D.C., 83 F.Supp. 914, between Cold Metal and United, holding that the contract of 1927 was a valid and existing contract, and that United.had an exclusive license thereunder, United’s license under the 1927 contract did not exist, for the Third Circuit in 79 F.2d 666 had so held. “ * * * on November 14, 1939, on denial of rehearing by this court,” said Chief Judge Biggs speaking for the court, “United became possessed of rights [under the license] which it could litigate.”
The decision of the District Court in Cold Metal Process Company v. United Engineering & Foundry Company, 132 F.Supp. 597, sustaining the finding of a Master in 2991 as to royalty rates and amounts due Cold Metal from United under the license agreement, to the effect that Patent ’016 “has not been involved in this litigation and is not the subject of the 1927 agreement” has no persuasive effect here. Since, as the District Court stated, Patent ’016 was not the subject of the application filed by Cold Metal in No. 2991 November 17, 1934, praying for an injunction against United, restraining United from prosecuting two suits for the infringement of ’195, and for determination of the payment due by United to Cold Metal under the terms of the license contract, the statement of the District Court, that Patent ’016 is not the subject of the 1927 agreement, is dictum.
For further elucidation of this involved litigation which has lasted for over twenty years we refer to our opinion and the discussion of the points involved by the Master and the District Court in the hearings below. The holding of the District Court that Cold Metal has never sought to enforce ’016 against United and hence gave United no reason to plead immunity under the license contract clearly is correct. We adhere to our decision.
The petition for rehearing in each case is denied.