Thermo King Corporation v. White's Trucking Service, Inc.

• Decision Date: 27 June 1961
• Docket Number: No. 18214.,18214.
• Citation: 292 F.2d 668
• Parties: THERMO KING CORPORATION and Dawes Manufacturing Company, Appellants-Appellees, v. WHITE'S TRUCKING SERVICE, INC. and Transicold Corporation, Appellees-Appellants. WHITE'S TRUCKING SERVICE, INC. and Transicold Corporation, Appellees-Appellants, v. THERMO KING CORPORATION and Dawes Manufacturing Company, Appellants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

292 F.2d 668 (1961)

THERMO KING CORPORATION and Dawes Manufacturing Company, Appellants-Appellees, v. WHITE'S TRUCKING SERVICE, INC. and Transicold Corporation, Appellees-Appellants.

WHITE'S TRUCKING SERVICE, INC. and Transicold Corporation, Appellees-Appellants, v. THERMO KING CORPORATION and Dawes Manufacturing Company, Appellants-Appellees.

No. 18214.

United States Court of Appeals Fifth Circuit.

June 27, 1961.

COPYRIGHT MATERIAL OMITTED

Harold D. Field, Jr., Benedict Deinard, Minneapolis, Minn., Eugene C. Heiman, Miami, Fla., Leonard Street & Deinard, Minneapolis, Minn., Myers, Heiman & Kaplan, Miami, Fla., of counsel, for appellants.

Francis Browne, Washington, D. C., Bart L. Cohen, Miami, Fla., Schwarz & Cohen, Miami, Fla., William E. Schuyler, Jr., Andrew B. Beveridge, Mead, Browne, Schuyler & Beveridge, Washington, D. C., of counsel, for appellees.

Before RIVES, BROWN and WISDOM, Circuit Judges.

JOHN R. BROWN, Circuit Judge.

This case illustrates again that the shortest way through may be the longest way around. Through a combination of circumstances, none of which was finally within the control of either counsel nor caused by initial error on the part of the particular Judge trying the case, the Trial Court countenanced the complete disregard of a procedural statute. The loser contends that this error infected the whole proceeding so much so that its harmful consequences are clearly demonstrated. In any event, it is further urged, such a substantial doubt is cast upon the reliability of the Court's findings that a retrial free from the influences of this error is imperatively required. We agree and reverse.

The suit was by the patentee, Thermo King, against Transicold¹ for infringement of three patents relating to mechanical refrigeration of automotive trucks.²

The Trial Judge, in his own words, "reluctantly" held the patents valid but then found no infringement. The Patentee was denied all relief and the alleged Infringer was granted a sweeping injunction against further suits anywhere, anytime at any place against Transicold or any of its dealers or customers.

Since we do not deal with the substantive merits of the controversy, it is enough to describe the patents very broadly. A basic problem in refrigeration of trucks is to provide some means by which the operation of a freezer unit may be effectively regulated to maintain desired temperature levels. An automatic mechanical system is needed because of the practical inability of the truck driver, whose hands are already full, to care for this manually. In this area, the most acute single problem is defrosting the evaporator coils. Heat has to be somehow applied to the coils. And since the automatic systems use a gas refrigerant, whatever plan is employed has to assure that condensed liquids do not get back to the inlet side of the gas compressor.

These patents, and especially No. 2, are hailed by the Patentee as revolutionary discoveries which found the answers to the problems which so long made mechanical automotive refrigeration impracticable. No. 1 is a temperature control device that regulates the gasoline compressor engine at idle or full speed. No. 2 is a means of introducing so-called super-heat gas out of the stream of compressed gas into the evaporator coils to melt the accumulated frost on the exterior of the coils. This includes, of course, devices actuated by pressure or temperature differential controls to begin and end the defrost operation. No. 3 discloses primarily an electric control circuit for use in a No. 2 super-heat system.

The pivotal factor is the notice provision of § 282 of the Patent Act, 35 U.S. C.A. § 282. This section first provides that the patent, when issued, is presumptively valid. It then permits, if pleaded, the defenses of non-infringement, invalidity for failure to comply with any of the specified requirements of the Act or any other defense specified in the Act. Of decisive importance here is the last portion which provides that in actions involving validity or infringement, the party asserting invalidity or non-infringement must give 30-day written notice of the prior art.³

The defendant-infringer, both in answer and counter-claim, denied validity and infringement. In the most general terms, it alleged that the patentee, Jones, "was not * * * the inventor * *"; that the claimed inventions "were known or used by others in this country, or patented or described in a printed publication * * *" prior to Jones; that they "were patented or described in printed publications * * * and/or were in public use or on sale * * * more than one year prior to * * * application * * * by * * * Jones * * *"; they "were described in patents granted * * * others * * * before * * * Jones"; prior to Jones the inventions claimed were "made in this country by others who have not abandoned, suppressed or concealed them;" the differences between prior art and invention "would have been obvious to a person having ordinary skill in the * * * arts * * *" of "the refrigeration and/or electrical arts"; the claims are inadequate under 35 U.S.C.A. § 112 for want of particularity.

Not a single prior patent was cited in the infringer's pleadings and down to the commencement of trial no written notice of any kind was given of prior patents, prior publications, prior use, or prior art.

In many ways this case is the unintended victim of court congestion typical of many metropolitan areas such as Miami. It demonstrates also that the use of designated visiting judges not only does not offer a panacea, but brings on some special problems of its own. Experience has indicated that for efficient utilization of visiting judges, the resident presiding judge must make up the calendar in advance to supply a docket of cases fixed and ready for trial. Of course, the visiting judge still has the responsibility of taking action as subsequent developments require, but there is an understandable reluctance on his part to continue or postpone or adjourn a case thus fixed. Since visiting judges normally are designated for a limited period of time, to do so frequently means that the case must then fall back on the overcongested resident judge or upon some later visiting judge. Of course, one practical safeguard is an adequate and thorough pretrial to determine whether the case is really ready. These problems in court administration have much to do with the action in this case.

This case was not really very old. The complaint was filed August 5, 1958, amended August 14. The defendants answered and counter-claimed on November 4, 1958. On December 22, 1958, the patentee filed its responsive pleading. On January 15, 1959, the Clerk sent written notice fixing the trial for February 15, 1959. Counsel did not receive this until January 17. Neither party was ready as the joint motion for continuance of January 28, 1959, attested. This was overruled by the presiding resident judge February 5.⁴ On the date (January 17, 1959) counsel received notice of the setting for February 15, there were, of course, less than 30 days remaining. The defendant could not have complied with § 282. But no effort was made to give as much notice as the remaining time made possible. There were other pretrial maneuvers before the Court but in none was the possibility suggested that defendant had specific prior patents and prior art to offer on the trial.

The trial commenced February 18, 1959, before the visiting judge.⁵ In the opening moments of the trial the defendants for the first time tendered a written notice under § 282.

That written notice listed 8 patents, 6 pieces of literature from the carrier corporation, 1 from another refrigerator manufacturer, and the names (and cities but no addresses) of two persons under the broad heading of "Prior Invention Knowledge or Use." The patentee objected vigorously to this belated tender. Its counsel pointed out the difficulties, if not impossibilities, of obtaining file wrapper histories and other data from the patent office and stated emphatically that it "is utterly impossible" and "we could not be afforded a fair trial."

Except to recite the short notice of trial date, the unsuccessful mutual efforts to postpone the trial, and the relative newness of the case, the defendant could offer no reasons why notice had been so long delayed. Defendants called the Court's attention to Fairchild v. Poe, 5 Cir., 1958, 259 F.2d 329, 332-333, urged before us as well "in support of the court's invoking its discretion and waiving the requirement of the rule." Defendants offered also that "subsequent to trial we will be happy to allow any amount of time that the plaintiff may wish." The visiting trial judge after hearing this extended argument rejected all of these suggestions by the defendants and sustained the plaintiff's objection without qualification of any kind. The judge's reasons went to the very heart of the statute. "It wouldn't be fair to require the plaintiff to meet this."⁶

By this ruling the Patentee was informed that the trial would proceed without the necessity of meeting any prior art evidence of the type which the notice statute § 282 and the case law construing it required a defendant to specify in writing. The defendants understood the full import of it, for they moved immediately for a continuance. The Court denied this out of hand.

But the trial, then just in its opening phases, was to turn out to be something quite different. For by the time the final gong was rung in this 9-day trial, the judge admitted over vigorous objection of the Patentee, a total of 34 patents⁷ not a single one of which had ever been cited by the defendants before the trial began. In addition the Court allowed prior use testimony of two of the defendant's witnesses Swinburne and Kirkpatrick and supporting prior printed publication exhibits specified in the rejected belated written notice.

The admission of these specific patents in evidence...