author: GOLDBERG, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Preston Lavern HOWARD, Defendant-Appellant.
    No. 74-3044.
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Jan. 17, 1975.
    Preston Lavern Howard, pro se.
    Frank D. McCown, U. S. Atty., Fort Worth, Tex., William F. Sanderson, Jr., Asst. U. S. Atty., Dallas, Tex., for plaintiff-appellee.
    Before WISDOM, GOLDBERG and GEE, Circuit Judges.

       Rule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York et al., 5 Cir. 1970., 431 F.2d 409, Part I.

   GOLDBERG, Circuit Judge:

Appellant Preston Lavern Howard was convicted by a jury of possessing goods stolen from interstate commerce, 18 U.S.C. § 659, and was sentenced to four years in prison. His conviction was affirmed on appeal, United States v. Howard, 5 Cir. 1973, 483 F.2d 229, cert. denied, 414 U.S. 1116, 94 S.Ct. 850, 38 L.Ed.2d 744. This appeal is taken from the district court’s denial of a motion to stay execution and grant a new trial.

Howard’s motion was based on an allegation of irregularity in the deliberations of the jury that convicted him. With his motion he submitted an affidavit allegedly executed by Emmett Burrell Wedgeworth, one of his convicting jury members, to the effect that during the jury’s deliberations one juror “stated that the defendant had been in trouble two or three times” and that this fact was used to pressure the affiant and another juror into aligning with the rest of the panel in a guilty verdict. The trial court denied Howard’s pro se .motion without a hearing, on the ground that a juror is incompetent to impeach the unanimous verdict of the jury in which he participated.

The basis of Howard’s motion is the assertion that extrinsic facts — that Howard had been in trouble before— were introduced by a juror into the jury room. No such evidence was admitted during the trial and Howard obviously had no opportunity to test, to contradict or to qualify the juror’s alleged assertion. In these circumstances, given the prejudicial potential of such an affirmation of extrinsic fact, we must vacate the district court’s order and remand the cause for the district court to inquire into the accuracy of the Wedgeworth affidavit and to consider, in light of the objective facts regarding the alleged jury breach, whether there was any reasonable possibility of prejudice to Howard. Modern day trials are factually presented in open court before the iron curtain descends upon the jury room. We cannot tolerate prejudicial factual intrusion into that sanctum lest our courts return to darker days of our jurisprudential history. The dagger of hidden evidence must not be taken from its scabbard for the first time in the jury room to wound the defendant; and unless its piercing effect is only skin deep and without prejudice to the anatomy of the trial, we must apply a constitutional salve.

I

The modern jury is conceived of as an institution that determines the merits of a case solely on the basis of the evidence developed before it in the adversary arena. As Justice Holmes observed in Patterson v. Colorado, 1907, 205 U.S. 454, 462, 27 S.Ct. 556, 558, 51 L.Ed. 879, 881, “The theory of our system is that the conclusions to be reached in a case will be induced only by evidence and argument in open court, and not by any outside influence, whether of private talk or public print.” Accordingly, courts have been continually sensitive to the jeopardy to a criminal defendant’s Sixth Amendment rights posed by any jury exposure to facts collected outside of trial.

This is the premise, for example, of the cases involving adverse publicity. See, e. g., Sheppard v. Maxwell, 1966, 384 U.S. 333, 86 S.Ct. 1507, 16 L.Ed.2d 600; Irvin v. Dowd, 1961, 366 U.S. 717, 81 S.Ct. 1639, 6 L.Ed.2d 751; Marshall v. United States, 1959, 360 U.S. 310, 79 S.Ct. 1171, 3 L.Ed.2d 1250. This danger to fair trials is most acute when facts which have not been tested by the trial process have been intentionally communicated directly to the jurors. Thus, for example, we held in Paz v. United States, 5 Cir. 1972, 462 F.2d 740, cert. denied, Jackson v. United States, 414 U.S. 820, 94 S.Ct. 47, 38 L.Ed.2d 52, that where books on drug problems and drug traffic were discovered to be in the jury room during the jury’s deliberations in a narcotics case, the defendants were entitled to a new trial “unless it [could] be said that there [was] no reasonable possibility that the books affected the verdict.” And in United States ex rel. Owen v. McMann, 2 Cir. 1970, 435 F.2d 813, cert. denied, 402 U.S. 906, 91 S.Ct. 1373, 28 L.Ed.2d 646, the Second Circuit affirmed a trial court’s grant of habeas relief to a state prisoner where one or some of the convicting jury members had reported to other jurors extrinsic facts regarding the defendant’s past. See also Parker v. Gladden, 1966, 385 U.S. 363, 87 S.Ct. 468, 17 L.Ed.2d 420 (communication between bailiff and jury regarding defendant); Remmer v. United States, 1954, 347 U.S. 227, 74 S.Ct. 450, 98 L.Ed. 654 (apparent attempt to bribe juror, followed by FBI interrogation); United States v. Thomas, 7 Cir. 1972, 463 F.2d 1061 (newspaper article in jury room); Downey v. Peyton, 4 Cir. 1971, 451 F.2d 236 (discussion among jurors of extrinsic evidence regarding defendant’s conduct in other affairs); United States v. Pittman, 9 Cir. 1971, 449 F.2d 1284 (government witness operating tape recorder in jury room); Farese v. United States, 5 Cir. 1970, 428 F.2d 178 (jury discovery of $750 in cash in exhibit, crime charged involved monetary gain); Morgan v. United States, 5 Cir. 1967, 380 F.2d 915 (conversation between juror and non-juror regarding defendant); Richardson v. United States, 5 Cir. 1966, 360 F.2d 366 (conversation between juror and prosecution witness).

The same principles obtain in this case. Taking the affidavit as correct, we cannot conclude that the jury irregularity alleged here was inherently harmless to Howard’s rights. See Richardson v. United States, supra; cf. Remmer v. United States, supra. We cannot doubt the prejudicial potential of a report— which the criminal defendant had no opportunity to challenge — that he had been in trouble before. See Downey v. Peyton, supra; United States ex rel. Owen v. McMann, supra; cf. Remmer v. United States, supra. Compare Paz v. United States supra (“Here, as in [Farese v. United States, supra], the extrinsic matter does not go directly to the offense charged but to the type of conduct and activities on trial.”).

Nor do we think that Howard’s petition must fail because the extrinsic facts introduced into the jury room were baggage of a participating juror rather than a bailiff or some other foreigner to the jury’s deliberations. Rather, we follow the scholarly opinion of Judge Friendly on this matter in United States ex rel. Owen v. McMann, supra, a case closely paralleling this. While the thirteenth century jury may have been selected precisely because of its ready familiarity with background facts, this no longer fits our conception of the jury’s role. The modern juror’s “verdict must be based upon the evidence developed at the trial.” Irvin v. Dowd, 1961, 366 U.S. 717, 722, 81 S.Ct. 1639, 1642, 6 L.Ed.2d 751, 755. It is of course “the very stuff of the jury system” for the jury to exercise its collective wisdom and experience in dissecting the evidence properly before it; and'in this process the cross-pollination of opinion, viewpoint, and insight into human affairs is one of the jury’s strengths. But this does not include communication from one juror to another of objective extrinsic facts regarding the criminal defendant or his alleged crimes. As we said in Farese v. United States, supra, 428 F.2d at 179-180:

It is a fundamental principle that the government has the burden of establishing guilt solely on the basis of evidence produced in the courtroom and under circumstances assuring the accused all the safeguards of a fair trial.
. Judicial control of the jur- or[s’] knowledge of the case pursuant to the laws of evidence is fundamental to the prevention of bias and prejudice. Our rules of evidence are designed to exclude from consideration by the jurors those facts and objects which may tend to prejudice or confuse. Evidence presented under the exclusionary rules is subject to cross-examination and rebuttal. It is therefore necessary that all evidence developed against an accused “come from the witness stand in a public courtroom where there is full judicial protection of the defendant’s right of confrontation, of cross-examination, and of counsel.” Turner v. Louisiana, 1965, 379 U.S. 466, 472-473, 85 S.Ct. 546, 550, 13 L.Ed.2d 424.

These principles are equally offended whether the prejudicial extrinsic evidence before the jury comes from the lips of a bailiff or a juror. Accord, Downey v. Peyton, supra. See also United States v. Thomas, supra (newspaper articles introduced into jury room by jurors); Paz v. United States, supra (books evidently introduced into jury room by juror).

The Government objects that we may not consider the affidavit of juror Wedgeworth, because a juror cannot impeach his own panel’s verdict. But the Government’s characterization of the recognized doctrine is grossly oversimplified. Well-established case law forbids the eliciting of juror testimony regarding the jury’s mental processes, or the influences that any particular evidence had upon the jury’s conclusion. See United States v. Blackburn, 5 Cir. 1971, 446 F.2d 1089; Dickinson v. United States, 5 Cir. 1970, 421 F.2d 630; Cunningham v. United States, 5 Cir. 1966, 356 F.2d 454. However, it was established federal law as early as Mattox v. United States, 1892, 146 U.S. 140, 149, 13 S.Ct. 50, 53, 36 L.Ed. 917, 921, (involving a bailiff’s statements to the jury, and exposure of the jury to a prejudicial newspaper article) that “a juryman may testify to any facts bearing upon the question of the existence of any extraneous influence, although not as to how far that influence operated upon his mind” [emphasis added]. Accord, Remmer v. United States, supra; United States v. Thomas, supra; Downey v. Peyton, supra; Miller v. United States, 2 Cir. 1968, 403 F.2d 77; Proposed Fed.R.Evid. 606(b), 56 F.R.D. 183; ABA Standards Relating to the Administration of Criminal Justice, Trial By Jury, § 5.7(b)(i); 2 C. Wright, Federal Practice and Procedure, § 554, p. 492. Thus in Downey v. Peyton, supra, the Fourth Circuit remanded to the district court for a hearing on whether prejudicial matters not in evidence were actually discussed in the jury room, as had been alleged by some jurors. Similarly, the Second Circuit affirmed identical steps initiated by the district court in United States ex rel. Owen v. McMann, supra. See also Remmer v. United States, supra. Moreover, this is consistent with procedures we have adopted in resolving other cases dealing with jury irregularities, viz. permitting examination of jurors regarding introduction of extrinsic facts into the jury room. In Paz v. United States, supra, for example, we remanded to the district court

with directions to conduct an evidentiary hearing to determine whether there is or is not a reasonable possibility that the books affected the jury’s verdict, Farese v. United States, supra. Inquiry must be made into how the books reached the jury room; whether they were available to members of the jury and, if so, for how long; the extent, if any, to which they were seen, read, discussed and considered by members of the jury; and such other matters as may bear on the issue of the reasonable possibility of whether they affected the verdict.

462 F.2d at 746. See also United States v. Allison, 5 Cir. 1973, 481 F.2d 468; Morgan v. United States, supra; Richardson v. United States, supra.

Accordingly, we remand the cause to the district court for further proceedings. The district court should hold a hearing to determine the accuracy of the objective allegations of the Wedgeworth affidavit. In so proceeding, the district court must disregard those portions of the affidavit purporting to reveal the influence the alleged prejudicial extrinsic matter had upon the jurors, and it must avoid examination concerning any other aspect of the jurors’ mental processes. The evidentiary inquiry before the district court on remand must be limited to objective demonstration of extrinsic factual matter disclosed in the jury room. Having determined the precise quality of the jury breach, if any, the district court must then determine whether there was a reasonable possibility that the breach was prejudicial to the defendant. See United States v. Allison, supra; Paz v. United States, supra; Farese v. United States, supra. Again, the district court is precluded from investigating the subjective effects of any breach on any jurors, whether such effects might be shown to affirm or negate the conclusion of actual prejudice. Though a judge lacks even the insight of a psychiatrist, he must reach a judgment concerning the subjective effects of objective facts without benefit of couch-interview introspections. In this determination, prejudice will be assumed in the form of a rebuttable presumption, and the burden is on the Government to demonstrate the harmlessness of any breach to the defendant. See Remmer v. United States, supra; United States v. Allison, supra; Richardson v. United States, supra.

The order denying Howard’s motion for new trial is vacated, and the cause is remanded for further proceedings consistent with this opinion.

      . Nor does the fact that the extrinsic facts were alleged to have been reported to the jury orally rather than by document conclusively defuse the threat of prejudice. See, e. g., Downey v. Peyton, supra; United States ex rel. Owen v. McMann, supra. Rather, this is simply one in the matrix of factors that must be evaluated by the district court on remand. See United States v. McKinney, 5 Cir. 1971, 434 F.2d 831, cert. denied, 401 U.S. 922, 91 S.Ct. 910, 27 L.Ed.2d 825, reconsidering United States v. McKinney, 5 Cir. 1970, 429 F.2d 1019. Cf. Paz v. United States, 5 Cir. 1973, 473 F.2d 662 (Paz II); Morgan v. United States, 5 Cir. 1968, 399 F.2d 93, cert. denied, 393 U.S. 1025, 89 S.Ct. 635, 21 L.Ed.2d 568 (Morgan II); Richardson v. United States, 5 Cir. 1967, 376 F.2d 844 (Richardson II).

      . See discussion in United States ex rel. Owen v. McMann, 435 F.2d at 816.

      . The evolved law represents an accommodation of conflicting policies: on the one hand, the interest in stability of jury verdicts and the protection of jurors from harassment, see McDonald v. Pless, 1915, 238 U.S. 264, 35 S.Ct. 783, 59 L.Ed. 1300; on the other hand, the prevention of injustice arising from unfair trial. As Judge Friendly has remarked, “While [existing law] can be criticized as forbidding inquiry into the subject most truly pertinent, it represents a pragmatic judgment how best to attempt reconciliation of the irreconcilable.” Miller v. United States, 403 F.2d at 83, n. 11. In framing its view in Mattox the Supreme Court relied in part on the reasoning of Perry v. Bailey, 12 Kan. 539, 545:

        Public policy forbids that a matter resting in the personal consciousness of one juror should be received to overthrow the verdict, because being personal it is not accessible to other testimony; it gives to the secret thought of one the power to disturb the expressed conclusions of twelve; its tendency is to produce bad faith on the part of a minority, to induce an apparent acquiescence with the purpose of subsequent dissent; to induce tampering with individual jurors subsequent to the verdict. But as to overt acts, they are accessible to the knowledge of all the jurors; if one affirms misconduct, the remaining eleven can deny; one cannot disturb the action of the twelve; it is useless to tamper with one, for the eleven may be heard. Under this view of the law the affidavits were properly received. They tended to prove something which did not essentially inhere in the verdict, an overt act, open to the knowledge of all the jury, and not alone within the personal consciousness of one.


source: Caselaw Access Project

author: RONEY, Circuit Judge:

license: Public Domain

text:
    Lenore Williamson BURGESS, Individually and as guardian of the Estate of Ethel Jackson Williamson, a non compos mentis, Plaintiff-Appellee, v. Warren Jackson WILLIAMSON, Defendant-Appellant.
    No. 73-3162.
    United States Court of Appeals, Fifth Circuit.
    Jan. 15, 1975.
    Rehearing Denied Feb. 20, 1975.

      Jack Crenshaw, M. Waller, Montgomery, Ala., for defendant-appellant.
    James W. May, Birmingham, Ala., for plaintiff-appellee.

      Before DYER, MORGAN and RO-NEY, Circuit Judges.
   RONEY, Circuit Judge:

This appeal arises from an Alabama diversity case in which a sister sued her brother for an accounting and damages as to the handling of their mother’s financial affairs. The parties are now co-guardians of their incompetent mother’s estate, but the son’s activities, which were the subject of his sister’s complaints, involve a long period prior to the establishment of the guardianship, during the years in which the defendant invested funds for his mother. Basically, the sister alleged that her brother had commingled their mother’s funds with his own, had not rendered a proper accounting therefor, and that he had personally profited from certain transactions contrary to his fiduciary obligations. The case was vexatiously complicated for all involved because of the totally inadequate records maintained by the son, an attorney, and the free commingling of his and his mother’s funds. On the son’s appeal from a substantial defeat by his sister in the trial court, we affirm in part and reverse in part.

Sometime after the death of his father in 1953, Warren Williamson agreed to loan sums of money for his mother, Ethel Williamson, to remit interest on such sums to his mother, and to collect the principal of each loan when due. The mother also made personal loans to her son from time to time. A large volume of a variety of transactions occurred until January 9, 1970, when the son and his sister, Lenore Williamson Burgess, who sues individually and on behalf of the estate, were appointed co-guardians of the estate of their mother, who by that time was incompetent. The devastating effect of the son’s failure to keep proper records of his mother’s affairs surfaced when the sister paid approximately $20,-000.00 to a firm of accountants to unravel the matter and was told that the books were hopelessly garbled. The district court held that the son had, for all intents and purposes, used his mother’s funds as his own.

There is no point in our reciting the voluminous facts which were developed in a magistrate’s hearing that lasted in excess of twenty days, except insofar as they are necessary for an understanding of our review of each issue submitted to us on the appeal. The magistrate’s hearing involved an accountant, special master’s report, and extensive objections filed thereto. The necessary facts will be revealed as we discuss each of the five decisions of the district court, which we are asked to review, to wit: (1) charged son with compound interest on those funds which mother had entrusted to him to loan on her account; (2) charged son with compound interest on a certain personal loan known as the Piggly Wiggly loan; (3) established a constructive trust in favor of the estate upon certain real property, the Fred Waller property; (4) awarded sister the sum of $50,000.00 as compensatory damages; and (5) awarded sister the sum of $20,000.00 as expert witness fees. We are not unmindful of the manifold difficulties which the district court faced during those years in which the instant litigation was pending before it.

1. Compound Interest Award on Trust Funds

On September 19, 1957, mother, feeling that she had a “serious ailment,” composed a letter to her four children, including son and sister, in which she made certain statements concerning her financial situation. Mother stated that, as of September 19, 1957, she had advanced son the sum of $83,100.00. In his report, the magistrate accepted this figure, which included the $7,500.00 Piggly Wiggly loan, as an account stated. Finding that son had failed to keep adequate records of mother’s loans, the magistrate stated that “in fiduciary accounting, the compound interest method may be used in the absence of books and records sufficient to support an accounting,” and that six percent was a reasonable rate at which to compound the interest annually. Therefore, the magistrate used the sum of $83,100.00 as the opening balance upon which to compound the interest, with the ordinary adjustments for monies received and disbursed, to arrive at the final sum of $117,687.88, for which the district court held son accountable.

Neither party to this appeal cites this Court to any Alabama law or court decision which stands for the proposition that, where a non-court appointed fiduciary cannot produce adequate books or records, the compound interest method is a legally acceptable method of determining accountability. Both parties rely, however, on a series of decisions by the Supreme Court of Alabama which deal with guardian-ward situations. These cases, including Bryant v. Craig, 12 Ala. 354 (1847), and Gordon v. Brunson, 287 Ala. 535, 253 So.2d 183 (1971), hold that, where a guardian so grossly neglects his duties as to evidence a corrupt intention, he may be charged with compound interest. The plaintiff asserts that the defendant had nothing but corrupt intentions in managing their mother’s funds. Defendant claims that the facts do not support such a finding as to bring the case within these authorities.

In particular, both plaintiff and defendant argue the applicability of Gordon v. Brunson, supra, to the case at bar. In Gordon, where a guardian failed to invest his ward’s funds as required by law and also prepaid himself commissions out of his ward’s estate, the trial court charged the guardian simple interest on both the uninvested funds and the prepaid commissions. The Supreme Court of Alabama affirmed the award as to the uninvested funds, holding that a mere failure to invest did not support a finding of corrupt intention. As to the ' prepaid commissions, however, the court held the guardian accountable for six percent interest per annum, compounded annually. The court in Gordon based its decision to compound interest on the case of McGowan v. Milner, 195 Ala. 44, 70 So. 175 (1915), in which the Supreme Court of Alabama held that

[Wjhere a guardian uses -his ward’s funds, or lends them to a firm of which he is a member, the interest must be compounded annually.

70 So. at 177. Sister argues that son used mother’s monies as his own, while son asserts that his actions do not evidence a corrupt intention or, at least, that the magistrate made no specific findings on this point.

While the cases cited by the parties on appeal offer some helpful guidelines for an Erie review, they are not factually identical to the case at bar. Although son was appointed co-guardian of the mother’s estate on January 9, 1970, the instant action is to determine son’s accountability to mother for the period of time from 1953, when he first began handling her investments, until his court appointment in 1970. Thus, during the seventeen years or so in question, son was not acting as a court-appointed guardian as were the defendants in the Craig, Gordon, and McGowan cases. We must determine, therefore, whether the Alabama courts would apply a different standard against a son-fiduciary who manages his mother’s funds from that imposed against a court-appointed guardian, who, in large part, must administer his ward’s estate according to statutory guidelines.

There is no one general principle of law which controls whether or not a fiduciary will be chargeable with compound interest upon the funds entrusted to him. In 1853, the Supreme Court stated in Barney v. Saunders, 57 U.S. (16 How.) 535, 14 L.Ed. 1047 (1853),

On the subject of compounding interest on trustees, there is, and indeed could not well be, any uniform rule which could justly apply to all cases. When a trust to invest had been grossly and wilfully neglected; where the funds have been used by the trustees in their own business, or profits made of which they give no account, interest is compounded as a punishment, or as a measure of damage for undisclosed profits and in place of them.

57 U.S. (16 How.) at 542.

The theory that compound interest should be assessed against a trustee as punishment for certain breaches of trust has been discarded by the Restatement (Second) of Trusts in favor of the theory that trustees should not be allowed to profit from their unauthorized use of trust funds. Section 207 of the Restatement indicates that a trustee, as a general rule, will be charged with simple interest and not compound' interest, unless

(1) he has received compound interest, (2) he has received a profit which cannot be ascertained but is presumably at least equal to compound interest or (3) it was his duty to accumulate the income.

A close reading of the Alabama cases which charge guardians with compound interest, however, suggests that the Alabama courts have so far assessed compound interest primarily to punish the guardian for his “corrupt intent,” under a Barney v. Saunders approach, rather than to recapture profits for the ward, under a Restatement theory.

Technically, son was neither a guardian nor a trustee in his relationship with his mother. In the district court’s terms, son was mother’s “fiduciary” in the management of her investments. As a fiduciary son was unquestionably subject to essentially the same basic fiduciary duties as a guardian, a trustee, or any other fiduciary, however they might be relaxed because of the family relationship. Yet, the district court, adopting the magistrate’s report, specifically found that son kept inadequate books and records of mother’s loans and commingled her monies with his. On at least two occasions, son collected compound interest on loans made on mother’s account.

Under an Erie extension of the case law which charges guardians with compound interest when they appropriate their wards’ funds to their own use or so grossly neglect their duties as to evidence corrupt intention, we think that the district court correctly decided that the Alabama courts would assess son with compound interest on those funds which he invested on mother’s account. Even under the Restatement theory, the fact that son on occasion collected compound interest might well justify an assessment of compound interest against son, especially in light of the garbled state of his business records.

2. The Piggly Wiggly Loan

In 1954, mother loaned son the sum of $7,500.00 to purchase a part interest for himself in a Piggly Wiggly grocery store. The check which mother transferred the Piggly Wiggly funds to son bore the notation, “Personal loan for 3 yrs to Jack (Piggly Wiggly) 2% int.” In the September 18, 1957, letter, mother stated that she had loaned son a total of $83,-100.00, including the Piggly Wiggly loan. Therefore, when the magistrate accepted the $83,100.00 figure as an account stated and compounded the interest thereon, he necessarily charged son with compound interest on the Piggly Wiggly loan since 1957.

In his report, which the district court adopted en toto, the magistrate specifically discusses the Piggly Wiggly loan. Relying upon Gordon v. Brunson, 287 Ala. 535, 253 So.2d 183 (1971), the magistrate states,

In the absence of the most convincing evidence to the contrary, a personal loan to a fiduciary is chargeable to him with interest compounded annually at the legal rate, in this case, six per cent.

The facts of the Gordon case, however, do not show it to support a charge of compound interest upon the personal loan in the case sub judice. In Gordon, the guardian had prepaid himself commissions out of his ward’s estate. On its facts, the Gordon case clearly does not apply to the situation at bar where a competent mother voluntarily made a personal loan to her son, prior to his appointment as a guardian of her estate, at a stated rate of interest. Unlike the guardian in Gordon who misappropriated his ward’s funds, son is guilty of no wrongdoing in borrowing funds from his mother to purchase an interest in the grocery store. The fact that son acted as a fiduciary in loaning other monies on mother’s account does not color the character of the Piggly Wiggly loan, a personal loan from a mother to her son to help him in his business ventures.

Neither appellant nor appellee has cited any Alabama decision which would sustain the charge of compound interest on the Piggly Wiggly loan in the case at bar. Nor has either party cited to this Court any controlling Alabama statute. Sister argues that Title 21, Section 43, Code of Alabama (1940) (Recomp.1958) is applicable to the Piggly Wiggly loan. The only loans which fall within the purview of this statute, however, are those which a court-appointed guardian makes on behalf of his ward with his ward’s money. Inasmuch as son was not his mother’s legal guardian during the period of time in question, Title 21, Section 43, Code of Alabama (1940) (Recomp. 1958) does not control this case.

In the absence of a statute or an agreement, either express or implied, the law of Alabama is clear that the payee of a note has no right to charge and collect compound interest from the payor. Smith v. Yancey, 198 Ala. 221, 73 So. 477 (1916). We reverse the decision of the district court in this regard. The question remains, however, as to what rate of simple interest, if any, should be applied to the $7,500.00 loan.

The original terms of the Piggly Wiggly loan, as noted on the January 1954 check by which mother transferred the funds to son, were- that the loan was for a period of three years at a rate of interest of two percent per annum. In September of 1957, however, some nine months after the date when the loan was due, mother discussed the Piggly Wiggly loan extensively in her September 19 letter. After stating that son had insisted upon paying interest on the loan, mother continued,

So I accepted his terms — but with a mental reservation that at the end of three years, I would return the interest to him, or either return the interest as gifts, along.
If in some way, Jack has paid this interest, some way that my records do not show, then he is to be reimbursed from my funds. . . . If he has not, he is not to do so. I never intended to accept it.

The magistrate interpreted mother’s letter to provide for the forebearance of any interest from January 1954 to the date of the letter. From that date, September 19, 1957, to January 9, 1970, the district court, in approving the magistrate’s report, charged interest compounded annually at the rate of six percent.

The September 19 letter is the only evidence of mother’s intention as to what interest, if any, son should pay on the Piggly Wiggly loan. Not only did mother state that she never intended to accept any interest from her son, but she specifically commented that son’s use of the $7,500.00 without the charge of interest would be fair compensation to him for handling her loans:

I figured it this way: if invested at six per’cent, this $7,500.00 would bring me $450.00. It became early evident that Jack did not have the time to handle my loans, and make a living for himself, so that I felt that in the interest of harmony between us-and in justice to all of us, I should explore the possibilities of relieving him of this burden. So I consulted Mr. John Curry of The First National Bank of Montgomery as to what he could do for me.
I found that I could invest the money in savings or establish a revocable trust, the bank investing these funds. In February 1954, I could count on a return of four percent at most, either way. I had the choice between relieving Jack now, or lessening the amount of inheritance of you all. At the time, I chose to let Jack continue to handle the loans as long as I could.
Mr. Curry wrote me that the charge for investment (trust) would be about ten per cent of the income. Therefore, I figured that the $450.00 above woul’d be, in a way, a fair payment to Jack for his handling of my loans.

It is undisputed that son continued to loan money on his mother’s account from September 19, 1957, until his appointment as co-guardian of her estate in 1970. The only conclusion which reasonably can be drawn from mother’s letter is that, although she expected son to repay the loan, she did not intend son to pay any interest on the sum of $7,500.00. The son should be liable to the estate of mother for the repayment of the principal of the Piggly Wiggly loan, without interest.

3. Constructive Trust on Fred Waller Property

In 1962, son made a series of loans to Fred Waller, an old business associate, on mother’s account. The loans totalled approximately $25,000.00. Although the facts surrounding the Waller loans are monumentally confusing, it is clear that Waller, as security for at least $9,500.00 of his indebtedness, assigned his statutory right of redemption to certain property to son in August of 1962. In December of the same year, son redeemed the real estate with the proceeds of a mortgage on the property in the sum of $40,-000.00. Son took title to the property in his own name and obligated himself on the mortgage note. The district court found that son held the title to the Waller property as constructive trustee for the estate of mother.

A constructive trust is a creation of equity which operates to prevent unjust enrichment. The Supreme Court of Alabama has defined a constructive trust as

such as are raised by equity in respect of property which has been acquired by fraud, or where, though acquired without fraud, it is against equity that it should be retained by him who holds it.

Putnam v. Putnam, 274 Ala. 472, 150 So.2d 209, 212 (1963). A court of equity is bound by no unyielding formula in decreeing a constructive trust, and the equity of the situation must shape the measure of relief. Sims v. Reinert, 285 Ala. 658, 235 So.2d 802 (1970).

In a fiduciary relationship, a fiduciary who improperly competes with a beneficiary and thereby acquires title to property will hold that property upon a constructive trust for the beneficiary.

The principle, however, goes further than this and applies even where the interest purchased by the fiduciary for himself is not an interest in property of the beneficiary entrusted to him, or property which he has undertaken to purchase for the beneficiary, provided that the property which he purchases for himself is sufficiently connected with the scope of his duties as fiduciary so that it is improper for him to purchase it for himself.

5 Scott on Trusts § 504, p. 3558 (1967). Son, in exercising Waller’s statutory right of redemption, purchased property which was closely connected with his duties to mother to lend her funds upon adequate security. Under such circumstances, even though son had no duty or power to acquire real estate for his mother, the district court found that it was improper for son to purchase the realty in question for himself. The district court was unpersuaded by son’s argument that, because he personally guaranteed his mother’s loans, he had breached no duty to her by taking title to the Waller realty in himself.

Under the laws of Alabama, the question of whether or not a constructive trust arises in a certain situation is one of fact. Sims v. Reinert, supra. The district court found that the son, as a fiduciary, first used mother’s funds to acquire Waller’s statutory right of redemption and then exercised that right in his personal capacity. On review, we have carefully examined the voluminous record in this case and we conclude that the finding of the district court in this regard is not clearly erroneous.

Although we affirm the constructive trust on the Waller property in favor of mother, we are concerned that sister, as co-guardian for mother’s estate, receives a double recovery under the present terms of the district court’s order. The mother’s estate not only recovers the principal of the Fred Waller loans, the money with which the right of redemption was acquired, with six percent interest thereon compounded annually, but she also receives legal title to the redeemed realty. Such a result is clearly inequitable. Therefore, we remand this cause to the district court with instructions that sister, as co-guardian for the estate of mother, be allowed to elect whether the estate will accept repayment of the principal of the loans with six percent interest compounded annually or will take title to the Fred Waller property. Although son is a co-guardian of mother’s estate, the district court will not allow him to participate in or present opposition to any election which sister should make on behalf of the estate.

If sister elects to receive title to the realty, then mother’s estate, as the district court stated in its order, will take the property subject to the rights of the mortgagee in same. Further, if sister elects to take title to the real estate, son will be allowed to prove any credit to which he would be entitled upon a conveyance of the property to the guardianship estate.

4. Award of $50,000.00 Damages

The district court awarded sister the sum of $50,000.00 as damages against son to partially compensate her for the filing and prosecution of the instant action. Finding that son had failed to keep adequate records and to render a fiduciary accounting to sister, the district court concluded that son’s breaches of his fiduciary duty were such as to amount to either actual or constructive fraud. The court held that $50,000.00 was reasonable compensation to sister in the case sub judice, in light of the court’s personal knowledge of the manner in which the action had been prosecuted. At least in substantial part, the court’s award was based upon the magistrate’s finding that $43,100.00 was a reasonable attorney’s fee for sister.

Under Alabama law, attorney’s fees are not ordinarily assessable as an item of damages unless provided for by law or by contract. As the Supreme Court of Alabama stated in Hartford Accident & Indemnity Co. v. Cosby, 277 Ala. 596, 173 So.2d 585 (1965),

the general rule is there can be no recovery as damages of the expenses of litigation or attorney’s fees paid by the opposing party, in the absence of a contractual or statutory duty, other than in a few recognized grounds of equity principles authorizing such liability.

173 So.2d at 595. Accord, Pappas v. City of Eufaula, 282 Ala. 242, 210 So.2d 802 (1968); Inland Mutual Ins. Co. v. Hightower, 274 Ala. 52, 145 So.2d 422 (1962); Moss v. Winston, 223 Ala. 512, 137 So. 303 (1931); Wilks v. Wilks, 176 Ala. 151, 57 So. 776 (1912).

Sister argues that the district court’s award may be affirmed under either (1) the “punitive damages” exception to the general rule regarding an award of attorney’s fees or (2) the equitable concept that a “defaulting trustee” may be liable for the costs of an accounting. Son contends that no Alabama court has ever applied the two theories of recovery which sister espouses, but he admits that an award of attorney’s fees against the mother’s estate may be proper under Title 46, Section 63, Code of Alabama (1940) (Recomp.1958). We review these arguments independently to determine if there is a sufficient legal basis under Alabama law to support the assessment of attorney’s fees as compensatory damages against son in the case at bar, or against the estate.

The “punitive damages” exception to the general rule established by Cosby, Pappas, Hightower, Moss and Wilks is that, in cases where punitive damages are or can be awarded, attorney’s fees may be included in the estimation of the amount of damages. See 22 Am.Jur.2d Damages § 167. In the case sub judiee, the district court apparently premised its award of attorney’s fees as compensatory damages upon this exception. Although the district court did not award sister punitive damages, the court found the conduct of son to be “. fraudulent to the extent that damages must be awarded the plaintiff for the purpose of partially compensating her for the filing and prosecution of this action.”

Sister asserts that the Supreme Court of Alabama impliedly recognized the “punitive damages” exception in Moss v. Winston, supra, where the court, while holding that expense of litigation resulting from breach of contract was not recoverable, quoted from Corpus Juris, as follows:

“Apart from the sums allowable and taxed as costs, there can, as a general rule, be no recovery as damages of the costs and expenses of litigation or expenditures for counsel fees. In cases of civil injury or breach of contract, in which there is no fraud, wilful negligence, or malice, the courts have considered that an award of the costs in the action is sufficient to cover the expenses of litigation and make no allowance for time, indirect loss and annoyance.”

137 So. at 304—305. We are cited to no case in which an Alabama court has ever recognized, much less applied, such exception to an action for accounting or an action for damages based on a breach of fiduciary duty. In fact, neither sister in her brief nor the district court in its opinion cites any case in which an Alabama court has assessed attorney’s fees as an item of damages under this exception to the general rule. We think the district court’s award cannot be affirmed on the basis of the “punitive damages” exception.

Second, the sister argues for affirmance under principles applied to a “defaulting trustee.” Broadly stated, the “defaulting trustee” doctrine allows the assessment of costs against a trustee in an action brought by a beneficiary to compel the trustee to make a final settlement of his administration of the trust. The district court invoked this equitable doctrine when it cited IV Bogert on Trusts § 962; I Perry on Trusts (7th ed.) § 903; and Buder v. Franz, 27 F.2d 101 (8th Cir. 1928), as authority for its decision to award sister compensatory damages in the case at bar. In pertinent part, Section 962 of Bogert on Trusts reads,

The failure to make and preserve records may also be a ground for removal of the trustee, or denying or reducing his compensation, or for charging him personally with part or all of the costs of the accounting.

Stressing the fact that son failed to keep adequate records and failed to render an accounting, sister contends that the district court properly assessed her attorney’s fees as a measure of compensatory damages against son as a “defaulting” fiduciary. She relies heavily upon certain language of the Supreme Court of Alabama in Murphy v. Merchants Nat. Bank of Mobile, 240 Ala. 688, 200 So. 894 (1941). Taken out of context, the statement of the court in Murphy is helpful to sister:

It has been recognized that costs necessarily incurred by the trustor or cestui que trust to compel a defaulting trustee to make a final settlement of his administration of the trust should be assessed against the trustee who has wrongfully necessitated these expenditures on accounting.

200 So. at 905. A close review of the Murphy decision, however, reveals that the language upon which sister pins her hopes is merely dicta, an explanation of the equitable principle behind an Alabama statute, now Title 11, Section 69, Code of Alabama (1940) (Recomp.1958), which provides that a defendant may recover full costs if he proves the plaintiff has intentionally taken or reserved usurious interest.

Even assuming that the Murphy case would support an award of. “expenditures on accounting” against son in the instant proceeding, we are referred to no Alabama decision in which a court has assessed attorney’s fees as an item of such expenditures under the “defaulting trustee” doctrine. We cannot affirm the district court’s award against the son under the “defaulting trustee” doctrine.

It may be, however, that Title 46, Section 63, Code of Alabama (1940) (Re-comp. 1958), will support the assessment of attorney’s fees as costs against the estate fund.

Title 46, Section 63, reads as follows: In all suits and proceedings in the probate courts and circuit courts and other courts of like jurisdiction, where there is involved the administration of a trust, . . . the court having jurisdiction of such suit or proceeding may ascertain a reasonable attorney’s fee, to be paid to the attorneys or solicitors representing the trust, . or any party in the suit or proceeding, and is authorized to tax as a part of the costs in such suit or proceeding such reasonable attorney’s fee, which is to be paid when collected as the other costs in the proceeding to such attorneys or solicitors as may be directed or ordered by the court and to be a lien on the several parts in case of partition in kind.

As the Supreme Court of Alabama noted in Penney v. Pritchard & McCall, 255 Ala. 13, 49 So.2d 782 (1950), the statute is largely an enactment of the equitable principle that

. a complainant in equity, who at his own expense has maintained a successful suit for the preservation protection or increase of a common fund or of common property, or who has created at his own expense or brought into court a fund in which others may share, may have paid to him, or sometimes directly to his attorney, an attorney’s fee for such services.

49 So.2d at 784. In that case, the statute was held applicable to a guardianship proceeding.

The allowance of attorney’s fees under this statute, however, is solely on the basis of benefits inuring to the common estate. Clark v. Clark, 287 Ala. 42, 247 So.2d 361 (1971).

We reverse the district court’s assessment of compensatory damages against the son, but remand the cause for the district court’s consideration of the aforesaid statute. Such a consideration necessarily will include a determination of the reasonableness of the attorney’s fees claimed by sister, as the record does not reveal any proper findings to support a decision that $43,100.00 was a reasonable attorney’s fee. To the extent that sister enhanced the estate of mother by her action in bringing this suit, however, sister should receive reasonable attorney’s fees from the ward’s estate.

5. Award of $20,000.00 as Expert Witness Fees

The district court, in its order filed October 26, 1972, awarded sister the sum of $20,000.0) as expert witness fees for the services of an accountant. Based upon our previous decisions in Baum v. United States, 432 F.2d 85 (5th Cir. 1970), United States v. Kolesar, 313 F.2d 835 (5th Cir. 1963), and Green v. American Tobacco Co., 304 F.2d 70 (5th Cir. 1962), we reverse the district court’s award. As we held in the aforementioned cases, a district court has no authority under 28 U.S.C.A. § 1821 to tax costs for compensation to an expert witness in excess of the statutory attendance per day, mileage and subsistence allowance.

In Henning v. Lake Charles Harbor & Terminal District, 387 F.2d 264 (5th Cir. 1968), we held that the federal courts in a diversity suit would apply a state statute which provided that expert witness fees could be taxed as costs in an eminent domain proceeding on the theory that the statute created a substantive right in favor of the landowner. Although Alabama has a statute which governs expert witness fees, Title 7, Section 366, Code of Alabama (1940) (Recomp.1958), it does not provide that such fees shall be taxed as costs. We are bound to follow our previous decisions in Baum, Kolesar, and Green. Accordingly, we reverse the district court’s award of $20,000.00 as expert witness fees to sister for accountant’s services.

The costs of this appeal shall be equally divided between the guardianship estate and the appellant.

Affirmed in part, reversed in part, and remanded for further proceedings consistent with this opinion.


author: AINSWORTH, Circuit Judge:

text:
    Preston G. GADDIS, Plaintiff-Appellee, v. CALGON CORPORATION, Defendant-Appellant.
    No. 73-3663.
    United States Court of Appeals, Fifth Circuit.
    Jan. 15, 1975.

      Joseph M. Fitzpatrick, New York City, Stanley E. Neely, Larry M. Lesh, Dallas, Tex., Eugene F. Buell, Pittsburgh, Pa., for defendant-appellant.
    V. Bryan Medlock, Jr., Dallas, Tex., for plaintiff-appellee.
    Before BROWN, Chief Judge, and AINSWORTH and DYER, Circuit Judges.
   AINSWORTH, Circuit Judge:

Plaintiff, Preston G. Gaddis, brought this suit for the infringement by Calgon Corporation of United States Patent No. 3,425,669 [Patent ’669] issued to plaintiff on February 4, 1969, for a “Dry Chemical Feeder Method and Apparatus.” Defendant answered and generally denied plaintiff’s allegations; it stated that the patent in suit was invalid and void, and further that its practices did not infringe any valid claims of the patent. Defendant also counterclaimed for damages under the antitrust laws of the United States, 15 U.S.C. §§ 1, 2 and 3, and averred that plaintiff had misused the patent in suit by utilizing it to control the sale of unpatented or unpatentable materials to the damage of defendant. The district court submitted 15 special interrogatories to the jury, which found the patent valid, that Claims 1 and 10 thereof were willfully and wantonly infringed by Calgon by its manufacture, use and sale of its own feeder devices, and that Gad-dis had not misused the patent in suit. The trial court entered judgment in accordance with the jury’s answers to special interrogatories and further found because of Calgon’s willful and wanton infringement that the case was an exceptional one within the meaning of 35 U.S.C. § 285, justifying the award of reasonable attorneys’ fees to Gaddis. A motion for judgment notwithstanding the verdict filed by Calgon was overruled by order of the trial court in which it stated that there was substantial evidence to support the jury’s verdict and that

“The only issue remaining is the question of obviousness under 35 U.S.C. § 103. This issue is a question of law, although it is determined on the basis of certain factual inquiries which were submitted for determination by the jury. Graham v. John Deere Co., 383 U.S. 1, 17-18 [86 S.Ct. 684, 15 L.Ed.2d 545] (1965).
“Section 103 of the Patent Act of 1952 provides that a patent may not be obtained if the subject matter would have been obvious to a person with ordinary skill in that art. In response to Special Issue No. 9, the jury found that the differences between the Gad-dis invention and the prior art, were not differences within the ordinary skill of the art. From this factual determination, this court concludes as a matter of law that the differences between the Gaddis invention and the prior art would not have been obvious to a person reasonably skilled in that art, and that Patent ’669 is valid under 35 U.S.C. § 103.”

Calgon appeals from the judgment of validity and infringement, from the finding of willful and wanton infringement, and the award of attorneys’ fees. We affirm the judgment of validity and infringement, but reverse in respect to willful and wanton infringement and the award of attorneys’ fees.

The Gaddis Petroleum Corporation is an oil-producing corporation which, through its Gaco Manufacturing Division, manufactures feeding equipment for the purpose of introducing chemicals into oil. Plaintiff, Preston Gaddis, is a stockholder in the corporation. Calgon is engaged in the manufacture and sale of water-treatment equipment, including filtration devices, pumps and miscellaneous chemical feeders. In 1965, after having experimented with various feeders, Gaddis became satisfied that the principle of pre-wetting individual particles of polymers by dropping them onto a wetting plane, prior to agitating them in a tank, would successfully dissolve these chemicals. In 1966 Calgon’s representative, Ben Sloat, approached Gaddis and asked him when he would be able to provide them with a feeder that would do this particular job. In June 1967, Gaddis started producing his DSF — 100, the first of what he described as a full-fledged feeder, a prototype of the Dry Chemical ’669 feeder, the patent in suit. The device was shown to Sloat who responded enthusiastically. Calgon, through an agreement with Gaddis, began using the DSF-100 in the summer of 1967. On November 13, 1967, Gaddis filed his application for the ’669 invention. On February 4, 1969, United States Patent . No. 3,425,669 issued to Gaddis. During the same month Calgon introduced and offered for sale a line of feeders of its own manufacture similar in construction and performance to the Gaddis No. ’669 feeder. In March, or the early spring of 1969 Gaddis discovered that Calgon was infringing his ’669 invention and brought it to the attention of Calgon. Calgon representatives promptly met with Gaddis and informed him that it was their belief that the invention was invalid and denied infringement of the claims of Gaddis’ patent. Following the meeting with Gaddis, Calgon sought the opinion of Eugene F. Buell, a patent specialist lawyer in Pittsburgh, who made a search of the prior art patents relative to the Gaddis patent and reported to Calgon on July 30, 1969 that it was his opinion that the Gaddis patent was not inventive and there was nothing patentable in the Gaddis broad claims inasmuch as the subject matter was fully disclosed by prior art, particularly the patents of Jamison, Watson, and Harvey, the latter two not having been cited by the Patent Office Examiner. Based on this advice, Calgon continued to manufacture and sell its feeders. Gaddis filed the present action for infringement on October 6, 1969. On November 7, 1969, Calgon employed a Washington, D. C. patent firm to make another search and validity study, resulting in a second opinion that the Gaddis patent was invalid.

I. VALIDITY OF THE GADDIS PATENT

In order to be patentable, a device must not only be useful and novel, it must also be non-obvious in light of the prior art. Graham v. John Deere Company of Kansas City, 383 U.S. 1, 3, 86 S.Ct. 684, 686, 15 L.Ed.2d 545 (1966); Rosen v. Kahlenberg, 5 Cir., 1973, 474 F.2d 858, 867; Ramirez v. Perez, 5 Cir., 1972, 457 F.2d 267, 269; Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 561; Swofford v. B & W, Inc., 5 Cir., 1968, 395 F.2d 362, 364. Calgon contends that the district judge erroneously considered the factual determination by the jury — that the differences between the Gaddis patent and the prior art were not differences within the ordinary skill of the art — as the basis for his holding of non-obviousness. While the ultimate question of obviousness is one of law, Graham v. John Deere Company of Kansas City, supra; Garrett Corporation v. American Safety Flight Systems, Inc., 5 Cir., 1974, 502 F.2d 9, this issue nevertheless lends itself to the following basic factual inquiries: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the art. Graham v. John Deere Company of Kansas City, supra, 383 U.S. at 17, 86 S.Ct. at 694. The trial judge thoroughly instructed the jury in respect to Calgon’s burden of proving obviousness under the requirements demanded by Graham, supra. The jury found, in response to interrogatories incorporating those requirements, that Calgon had failed in its proof. Thereafter, in denying Calgon’s motion for judgment notwithstanding the verdict, the trial judge independently concluded as a matter of law, based on the factual determinations made by the jury, that the prior art would not have been obvious to a person reasonably skilled in the art. In determining non-obviousness, the trial judge specifically cited Graham, supra, as a basis for his conclusion. We have independently analyzed the testimony and the numerous graphic illustrations and exhibits introduced in evidence and are unable to agree with Calgon that the district court failed to apply the correct legal standards for determining non-obviousness.

The Patent Examiner cited patents issued to Jamison, Gart, Martin and Katzer. Calgon contends that certain prior art — the Syntron, Watson and Harvey devices, which were not considered by the Patent Office — is much more pertinent than the cited patents and discloses the same combination of elements and performance of function as the patent in suit, thereby invalidating the Gaddis patent.

A patent of course is presumed valid and the burden of establishing invalidity rests upon the party asserting it. 35 U.S.C. § 282. However, pertinent pri- or art not considered by the Patent Office weakens the presumption of validity which normally attaches to a patent and requires a court to scrutinize the patent more closely. Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 557; Ingersoll-Rand Company v. Brunner & Lay, Inc., 5 Cir., 1973, 474 F.2d 491, 496; Cornell v. Adams Engineering Company, 5 Cir., 1958, 258 F.2d 874. Nevertheless, the presumption of validity is a strong one and is not to be overthrown except by clear and cogent evidence, that is, “evidence [which] has more than a dubious preponderance.” Radio Corporation v. Radio Engineering Laboratories, 293 U.S. 1, 8, 55 S.Ct. 928, 931, 79 L.Ed. 163. Thus, the pertinent question here is whether Calgon has met its burden by demonstrating that the teachings of the prior art relied on by it clearly destroy the presumption of validity-

The Gaddis patent.

The inventiveness of the Gaddis device is the economical, efficient and quick method and means of feeding and mixing free-flowing agglomerative dry chemicals with water, in a manner which provides for pre-wetting of the difficult-to-dissolve polymers before agitation, thereby precluding massing or globbing of the individual particles during the mixing process. The device itself consists of a storage reservoir from which the chemicals drop by gravity onto a horizontal vibrating trough which spreads and separates the particles causing them to bounce off onto a wetting plane, a gently moving, fan-shaped sheet of water provided by a spray nozzle in the upper part of a mixing chamber. The wetting plane individually pre-wets the particles and then discharges them into swirling water introduced by a small nozzle in the lower part of the mixing chamber, creating a hydraulic action for a thorough mixing of the chemicals with the liquid.

The prior art.

The Syntron device.

This apparatus contains combinations of elements similar to those found in the Gaddis invention, including a storage hopper, a vibratory feeder (which admittedly was used by Syntron prior to the Gaddis invention) located under the hopper, and a pre-wetting chamber. Dry material is fed from the hopper onto the vibrating feeder and thence into a solution pot where the material is pre-wet prior to its flowing into a mixing tank. Unlike Gaddis, the pre-wetting is accomplished by a thin film-like flow of liquid swirling around a conical solution pot, forcing the mixture downward into the throat of the vortex and thence into a mixing chamber. The significant difference between the Syntron and Gaddis devices rests in function and effect of the conical pre-wetting process of Syn-tron’s device and the fan-shaped prewetting plane of the Gaddis claims. Testimony by one of Calgon’s experts established that it is conceivable that some' of the particles of polymers flowing through the throat of a vortex similar to that used by Syntron may not become wet, thus producing lumps.

The Watson patent.

The Watson device consists of a funnel-shaped container into which chemicals are placed and then discharged into a cylindrical tank in which angled slots are arranged to allow water passing through them into a conduit to form baffles or layers which intersect, thus producing several areas of high turbulence within the conduit. The mixture is then conducted to a container where it goes into solution under the influence of mild agitation. The Watson patent, unlike that of Gaddis, does not teach that the chemicals should be separated into individual particles and gently pre-wet to avoid dumping. Instead the chemicals flowing through the narrow mouth of the channel have a tendency to concentrate as they fall into the conduit, and the wetting process is produced by high turbulence.

The Harvey patent.

The Harvey apparatus shows a funnel-shaped hopper, similar to that of the Watson device, which introduces chemicals into a mixing tube. The mixing tube contains apertures which are preferably slanted downwardly in order to give increased velocity to liquid entering the tube through the apertures. Unlike the Gaddis patent, it contains no teaching of separation of individual particles and no wetting plane to receive these particles. Similar to Watson, the wetting process is violent, not gentle as in the Gaddis device.

Our comparison of the prior art relied on by Calgon with the Gaddis patent claims convinces us, as it did the jury and the district judge, that Calgon has failed in its burden to destroy the presumption of validity of the Gaddis patent.

II. THE ISSUE OF INFRINGEMENT

The question of infringement of a patent is a question of fact. United States v. Esnault-Pelterie, 299 U.S. 201, 205, 57 S.Ct. 159, 161, 81 L.Ed. 123; Ziegler v. Phillips Petroleum Company, 5 Cir., 1973, 483 F.2d 858, 867; Harrington Manufacturing Co., Inc. v. White, 5 Cir., 1973, 475 F.2d 788, 796; Reynolds-Southwestern Corp. v. Dresser Industries, Inc., 5 Cir., 1967, 372 F.2d 592, 595. Infringement occurs only if there is substantial identity between the accused device and the patented invention as to means, operation and result. Harrington Manufacturing Co., Inc. v. White, supra; Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 563; McCutchen v. Singer Company, 5 Cir., 1967, 386 F.2d 82, 89.

Calgon’s principal contention in its argument against infringement is that the Gaddis claims, specifications and drawings require that means be provided for the introduction of water into the mixing tank, and that Calgon has no separate means or method for that function. The omission of that element, according to Calgon, avoids infringement. An examination of the record, including the testimony of plaintiff’s and defendant’s experts, shows that there is no substantial or significant difference between the two devices despite the fact that Calgon’s device, unlike that of Gaddis, uses only one source of water supply, and the turbulence required for mixing the polymers is produced mechanically instead of hydraulically.

Albert F. Yost, an employee of Calgon, who testified as its expert, described what Calgon contends is the typical Calgon feeder, the CPF model, as an apparatus for dispensing and mixing dry chemicals. It consists of a storage hopper, with a vibratory trough located between the hopper and a mixing tank. A water weir, which produces a sheet of water, is positioned beneath the trough. The polymer moves down from the hopper onto the trough from which it is bounced off as individual particles onto the moving sheet of water. A mechanical mixer, attached to the side of the tank, mixes the polymers with water which has reached the tank through the water weir beneath the trough. The testimony of Israel W. Santry, expert witness for Gaddis, essentially corroborated that of Yost in his description of the Calgon feeders. He further stated, however, that the mechanical mixing employed by Calgon accomplishes substantially the same result as that of the Gad-dis hydraulic mixing.

We recognize the well-established rule that an omission in the accused device of an ingredient or element contained in the complainant’s patent avoids infringement. Dunbar v. Meyers, 94 U.S. 187, 201, 24 L.Ed. 34 (1876); Cimiotti Unhairing Company v. American Fur Refining Company, 198 U.S. 399, 410, 25 S.Ct. 697, 702, 49 L.Ed 1100 (1905).

Nevertheless, Gaddis can still prevail under the doctrine of equivalents if his and Calgon’s devices do the same work in substantially the same way and accomplish the same result. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929); Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950); Rosen v. Kahlenberg, 5 Cir., 1973, 474 F.2d 858, 867. The theory on which the doctrine of equivalents is founded is that “if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though.they differ in name, form or shape.” Graver Tank & Mfg. Co., supra, 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097, quoting from Union Paper Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935, 938 (1878); Rosen v. Kahlenberg, 5 Cir., 1973, 474 F.2d 858, 867.

We find no error in the finding of infringement reached by the jury.

III. THE ISSUE OF WILLFUL AND WANTON INFRINGEMENT AND THE AWARD OF ATTORNEYS’ FEES

We find no substantial evidence to support the finding that infringement was willful and wanton. The patent was issued February 4, 1969. The record does not indicate that Calgon was aware of the patent until Gaddis called this fact to its attention in the spring of 1969. Gaddis was thereafter promptly informed that it was the opinion of Calgon’s staff that the Gaddis patent was not valid and therefore not infringed. Calgon’s reliance on non-validity was buttressed by the opinion obtained from its independent Pittsburgh patent counsel on July 30, 1969. It was only after this sequence of events that Gaddis filed suit on October 6, 1969. Under these circumstances, Gaddis’ contention that Calgon could not hide behind after-obtained legal opinions expressing invalidity of the Gaddis patent, allegedly sought to justify Calgon’s prior, infringement, must fall. There is no suggestion in the record to indicate that the Pittsburgh patent law firm opinion was not a bona fide one, or that Calgon did not act in good faith in requesting it. Calgon’s belief that the patent was invalid, based on that opinion, militates against willful and wanton infringement. See Duo-Flex Corporation v. Building Service Company, 5 Cir., 1963, 322 F.2d 94, 100. Thus we cannot uphold the finding of willful and wanton infringement. Consequently, the award of attorneys’ fees based on that unwarranted finding likewise is reversed.

Affirmed in part; reversed in part.

      . The Gaddis patent claims

      Claims 1 and 10, the only claims pertinent to this controversy, read as follows:

        Claim 1

      An apparatus for dispensing and mixing a dry chemical with a liquid and comprising a mixing chamber, a chemical storage reservoir, feeder means interposed between the chemical storage reservoir and mixing chamber, a wetting plane provided in the mixing chamber, said feeder means adapted for separating the chemical into individual particles and dispensing the individual particles onto the wet-
      ting plane, means for introducing a liquid into the mixing chamber in a rolling swirling action, and said wetting plane discharging the wetted individual particles therefrom into the swirling liquid for a thorough mixing of the chemicals therewith to provide a liquid solution.

        Claim 10

      A method for feeding and mixing a dry chemical with a liquid which comprises introducing the liquid into a mixing chamber, providing a swirling action for the liquid in the chamber during the mixing operation, providing a wetting plane within the mixing chamber above the swirling liquid, providing a supply of the chemical independent of the mixing chamber, separating the chemical into individual particles, dropping the individual particles by gravity onto the wetting plane for an initial wetting of the particles and moving the initially wetted particles along the wetting plane for discharge into the swirling liquid for a thorough mixing of the chemicals with the liquid.

      . The appointment of a special master and the conducting of an accounting was stayed by the trial court pending this appeal.

      . Ben Sloat wrote the following letter to the Calgon Denver Office:
      “Gentlemen:
      “About three months ago I sent out a request letter for everybody to start zeroing in on this polymer feeding proposition. Results have been very encouraging. Word from the Illinois Basin along with experience by Joe Kirk in Oklahoma and by Steve Adkins and Dwayne Edwards in Wichita have all been blended into an experience pattern. I had a chance to look at the most recent set up put together by John Taylor for feeding several hundred pounds a day of polymer in North Texas. Even though all of us have contributed quite a bit to this polymer feeding I think that the attached picture will be convincing evidence that Mr. Preston Gaddis of the Gaco Manufacturing Division in Bartlesville has done more than all the rest of us put together. Mr. Gaddis brought to bear a rare combination of talent, mechanical engineering ability and oil producing experience, along with a good background as a chemical feed pump manufacturer and came up with the Model DSF-100.
      “Mr. Gaddis tried five different polymer mixing principles, with three test units never passing shop tryouts. One test rig made it to the field and with minor modifications will make a good D-18 Coagulant feeder.
      “The DSF-100 wets each polymer particle before it enters the solution chamber. Once in the solution chamber each polymer particle has at least three minutes (average 4‘/2 minutes at 150 pound per day feed rate) to completely dissolve. The DSF-100 can easily be cylced [sic] five times an hour (10 times an hour maximum) and feed one pound of polymer in each cycle of fresh water. With brine as the make-up, two pounds of polymer a cycle will be possible. The range of the DSF-100 is tremendous. For example — it could cycle one time a day with 0.1 pounds of dry solids per cycle. It could cycle 240 times a day with 2 pounds of dry solids a cycle — or anywhere in between these two extremes.
      “Proportioning the feed solution into the system can be handled in any of three ways depending on the pressure, volume and accuracy needed. When accuracy is important and the feed solution can be concentrated up to 15 pounds a cycle (S-12, S-21, X-13, X-9, etc.) a duplex chemical feed pump should be specified. Chemical feed pump options range from duplex units that will cycle the DSF-100 one time a day against better than 1100 psi to chemical pumps that will cycle the DSF-100 twice an hour against 200 psi. In general, this chemical feed pump option will be used up to 50 pounds a day of polymer, or when the feeder is ultimately to be used where chemical pump accuracy will be important.
      “For a volume feed rate (greater than 2 cycles an hour) at discharge pressures under 20 psi a small gear pump is the most practical. The gear pump presently on the unit in the picture will cycle the unit 8 times an hour. By use of a by-pass the cycle frequency could be cut down to 2 times an hour quite easily.
      “For high volume, high pressure feeding situations (greater than 2 cycles an hour against up to 2,000 psi) a standard plunger pump should be used. Gaco has pumps available which will cycle the feeder from 2 times an hour to 10 times an hour against any pressure up to 2,000 pounds.
      “List price for the DSF-100 alone is $1185. Add on $500 for the duplex chemical feed pump option. Add $350 for the gear pump option. Both of these options come as a single unit integrated with the complete automation system of the DSF-100. *The separate plunger pump option is a $750 add on figure and will come as a separate skid mounted unit.
      “The standard DSF-100 requires 50 psi inlet water pressure and 110 volts of power. If 50 psi water pressure is not available, then an add-on of $250 will permit modifying the DSF-100 so that an additional pump will pressure water from 0 to the required 50 psi. Water going into the DSF-100 should be filtered and in the event that filtered and pressured water is not available another $100 add-on will provide for an eight element cartridge filter to take care of this matter.
      “What all of this boils down to is that we can now feed polymer in a completely corrosion resistant fashion in any amount and against any discharge pressure for a figure of less than $2000. You are all aware of the tremendous emphasis being placed on polymer sales for the coming years. Those of us who have been working with polymer projects for the last four or five months have realized that our sales will only be as good as our feeding abilities. I think the DSF-100 will bring us along very nicely.
      “A spec sheet covering the DSF-100 is now under preparation and will be available within the next few weeks. Please direct requests for this specification sheet to me in Denver.
      “Thank you.
      /s/ Ben Sloat
      Ben Sloat”

      . There is no dispute from the evidence that the Gaddis invention has enjoyed considerable commercial success. There is also evidence that the Gaddis DSF-100 feeder, which was the forerunner and prototype of the ’669 patent in suit, was considered by Calgon to be a breakthrough in the oil industry’s need for an inexpensive feeder designed for the quick, efficient and thorough mixing of polymers with liquid. Such secondary considerations, i. e., commercial success by the patentee and failure of others to supply long-felt needs of the industry, although not essential for determining the question of obviousness, are relevant for such a determination. See Graham v. John Deere Company of Kansas City, 383 U.S. 1, 17, 18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966); Ingersoll-Rand Company v. Brunner & Lay, Inc., 5 Cir., 1973, 474 F.2d 491, 495.

      . In Gaddis’ brief reference is made to documents outside the record tending to show Calgon’s knowledge. We obviously cannot take note of evidence not of record.

      . Cf. General Electric Company v. Sciaky Bros., Inc., 6 Cir., 1969, 415 F.2d 1068, in which an opinion from outside counsel was not obtained until eight years after General Electric “had commenced its willful and deliberate infringement.” Id., at 1072, 1073.