Inglett & Company v. Everglades Fertilizer Company

• Decision Date: 07 May 1958
• Docket Number: No. 16555.,16555.
• Citation: 255 F.2d 342
• Parties: INGLETT & COMPANY, Inc., Appellant, v. EVERGLADES FERTILIZER COMPANY, Inc., Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

255 F.2d 342 (1958)

INGLETT & COMPANY, Inc., Appellant, v. EVERGLADES FERTILIZER COMPANY, Inc., Appellee.

No. 16555.

United States Court of Appeals Fifth Circuit.

May 7, 1958.

Richard Spencer, Stamford, Conn., Charles O. Andrews, Jr., Orlando, Fla., Blair & Spencer, Stamford, Conn., of counsel, for appellant.

Philip Dressler, Ft. Lauderdale, Fla., Percy Freeman, New York City, Samuel J. Stoll, Jamaica, N. Y., for appellee.

Before CAMERON, JONES and BROWN, Circuit Judges.

JOHN R. BROWN, Circuit Judge.

The sole question here is whether the District Court could properly enter summary judgment for the defendant and against the Patentee presumably on the ground that there was no genuine dispute on the facts showing anticipation by the prior art. We emphasize this at the outset because, while here and there, the opinion may take the turn of one disposing of an appeal on the merits of a patent infringement suit, our inquiry and our analysis is directed to the much narrower question whether this was a case for summary judgment.

I.

The Inglett patent¹ is for an improved method of weighing and bagging bulk materials by which weighed quantities sufficient to completely fill the kraft bag are discharged from the hopper device through a large spout directly into the open mouth of the bag held lightly in place by the operator so that from the impact of the material, the bag drops quickly to a conveyor belt below, and is almost simultaneously carried away, to allow the operator successively to repeat the process.² As the Patentee analyzed the nine claims, the principal steps³ included fast moving slugs of the material falling by gravity at predetermined regular intervals into a bag held with a force insufficient to withstand the impact of a slug thus allowing the bag to fall away and drop onto a movable supporting surface.

II.

At an early and extensive pretrial conference, it was recognized by the Patentee's counsel that if defendant could satisfactorily establish that the bag-filling method used by Arcady Farms Milling Company in its Illinois plant (specified in the defendant's Notice of Prior Art) was in bona fide use more than a year prior to the filing of the application (June 12, 1953) and was the substantial equivalent of the disclosure of the patent, the plaintiff would lose and the defendant would win on the plea of invalidity. If that were established, counsel was both candid and wise enough to say, a trial running the gamut of the traditional patent suit contentions and defenses would be a waste of time. But whether read in or out of context, the colloquy did not amount to an agreement that, after the proposed depositions and inspection at the Arcady Mills plant, the Court could summarily dispose of the case on that point even though there were issues of fact concerning it. And yet that is substantially what occurred.

After the first Geberin deposition was taken on October 1, 1956, at Arcady Mills plant, defendant moved for summary judgment. The moving papers were composed of the motion and the extensive supporting affidavit of Samuel J. Stoll, Esq., its able and energetic counsel below and here. This remarkable document covers pages 31 to 54 of the printed record and then incorporates by reference 36 pages of extracts from the patent file wrapper, the Geberin-Mitchell deposition in this case and the deposition of Inglett taken by the defendant for use in the pending Virginia case, note 3, supra. After counteraffidavits of Inglett and his associates and several bagging people describing the comparative utility of the former and Inglett methods, Stoll filed a reply affidavit which, like the opening one, was extensive, covering with attachments another 21 pages of the printed record. The motion was fully argued with extended colloquy between Court and counsel discussing, as to both basic and subsidiary points, the existence and genuineness of factual controversies.

As we hold that these were issues requiring the Judge to hear and determine them as a trier of fact, as the Judge had done in the Eastern District of Virginia, little good would be served in discussing this evidence in detail. On the contrary, harm might be done, for despite our earlier caveat, Court or counsel or both might read into words said or unsaid and emphasis from inclusion or exclusion some indication by us of our views on the ultimate merits or decisive points. It sufficiently serves our purposes to confine our comments to illustrative references.

III.

In assaying this it is well to point out that anticipation, like infringement, involves questions of equivalence and is an inquiry requiring a factual determination.⁴

At the outset, the Geberin deposition, whether considered separately, F.R.C.P. 56(e), 28 U.S.C.A., or as an attachment substantiating what Stoll the witness, not Stoll the lawyer, knew, was an unusual thing. In defendant's Notice of Prior Art, reference was made to a machine shown in the 1954 issue of The Modern Packaging Encyclopedia. This showed the Arcady Mills so-called 5-6 machine in which apparently an operator held a bag on the discharge spout. The two questions were (1) was this substantially the same as the patented disclosure and (2) if so, when, in point of time, had this operation begun? This Geberin disposition is a conglomeration⁵ of counsel's discussion, statements on the record, omissions off the record, informal-like questioning now of Geberin, elsewhere of Mitchell, a vice president of Arcady Mills who served in many roles as observer, occasional witness as he made statements, and friend, associate and adviser to Gerberin, his subordinate.

On the first question (1) substantial equivalence of the patent disclosure, the deposition is primarily counsel's statement. Apparently the whole retinue made an inspection of the machine in operation. At the opening of the deposition, Mr. Stoll made an extensive statement describing the operation. To this counsel for Patentee responded by terms which showed a pretty large agreement in many things. But on the crucial point which has preoccupied Court and counsel here, below and in Virginia, the manner and extent to which the operator must hold onto the bag and the essential ingredients of a method which permits one, rather than the other, there was not acceptance or acquiescence. Had it been, or had it been so intended, this experienced patent counsel who had earlier expressed his awareness of the decisive issues with great candor, would hardly have continued either his presence there or the extensive work in the analysis of the Stoll affidavit and preparation of counter-affidavits and papers in opposition to the motion for summary judgment.

The second question (2), the time Arcady operations began, was equally uncertain especially when tested as it must be in the light of the principle that where an unpatented device, the existence and use of which are proved only by oral testimony, is asserted as an anticipation of the patent, the proof sustaining it must be clear, satisfactory and, by some it is said beyond a reasonable doubt, Hoeltke v. C. M. Kemp Manufacturing Co., 4 Cir., 80 F.2d 912; Zachos v. Sherwin-Williams Co., 5 Cir., 177 F.2d 762, 763; Walker on Patents, Deller's Ed., § 63, pp. 300-309. Geberin or Mitchell, or both, said that it must have been "about 1950." But with the date so crucial, whether this was a positive affirmation that it was prior to June 12, 1952, was a conclusion only one who weighed the contents of this deposition could reach. The date seemed to be fixed in relation to other things, e. g., the addition or change of a certain type of spout, etc., as to which it was stated shop records never inspected or produced if still existent, would be decisive. There was also much confusion and uncertainty as to what machines were being discussed, just what the changes in operations respecting, for example, use of clamps on the bags, etc., had been. We do not say that a trier could not find that the date was pre-1952. What we say is that that conclusion, on this deposition, would be the product of weighing, assimilating, sifting and inferring. The two functions of the Court, though, at one stage or another as a law suit wends its way through the courthouse, committed to the person of the same Judge are quite distinct. Cf. Marsh v. Illinois Central R. Co., 5 Cir., 175 F.2d 498; Whiteman v. Pitrie, 5 Cir., 220 F.2d 914.

IV.

By the very nature of the case, the Stoll affidavit, whether read as an original statement of facts known to the affiant or a mere convenient persuasive collection of those derived from the Geberin or Inglett depositions, reflects on its face that most of the important matters there discussed presented genuine factual controversy. The affidavit scarcely gets underway before he refers to file wrapper⁶ estoppel to show that the Examiner, had he known of Arcady, undoubtedly would have declined to issue the patent, or would have considered the sole point of novelty to be the manner in which the bag was held. While we may assume that the Court in reaching conclusions on the basis of this written document might be making findings having less insulation under the clearly erroneous principle, F.R.C.P. 52, 28 U.S.C.A., cf. Galena Oaks Corp. v. Scofield, 5 Cir., 218 F.2d 217; Thomas v. Commissioner of Internal Revenue, 5 Cir., 254 F.2d 233, estoppel as an equitable matter nearly always springs from facts. What did the Examiner⁷ mean? This might be what did he mean with respect to matters of fact? What did he mean with respect to matters of law? Indeed, whether file wrapper estoppel arises may depend on the factual setting, cf. Hunt Tool Co. v. Lawrence, 5 Cir., 242 F.2d 347; Bryan v. Garrett Oil Tools, Inc., 5 Cir., 245 F.2d 365.

Likewise, there was considerable disagreement about the operation of the Arcady 5-6 machine in contrast to the patented one. With full awareness that consideration of evidence on commercial utility must...