Rota-Carb Corporation v. Frye Manufacturing Company

• Decision Date: 19 February 1963
• Docket Number: No. 16877.,16877.
• Citation: 313 F.2d 443
• Parties: ROTA-CARB CORPORATION, a New York Corporation, and Bernard Harmon, Appellants, v. FRYE MANUFACTURING COMPANY, an Iowa Corporation, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

313 F.2d 443 (1963)

ROTA-CARB CORPORATION, a New York Corporation, and Bernard Harmon, Appellants, v. FRYE MANUFACTURING COMPANY, an Iowa Corporation, Appellee.

No. 16877.

United States Court of Appeals Eighth Circuit.

February 19, 1963.

Samuel J. Stoll, Jamaica, N. Y., made argument for appellants and Charles F. Swisher, Waterloo, Iowa was with him on the brief.

Irvin V. Gleim, Dayton, Ohio made argument for appellee and John C. Eddy, of Whitfield, Musgrave, Selvy, Fillmore, & Kelly, Des Moines, Iowa was with him on the brief.

Before SANBORN, VAN OOSTERHOUT and MATTHES, Circuit Judges.

SANBORN, Circuit Judge.

This is an appeal from a judgment dismissing the complaint of the plaintiffs (appellants) in an action for patent infringement. The patent in suit, United States Patent No. 2,781,278, for a "Method of Printing Carbon Transfer Ink in a Spaced Design on Paper," was issued February 12, 1957, to Bernard Harmon upon an application filed August 13, 1952, and was thereafter assigned by him to Rota-Carb Corporation. The District Court determined that the patent was void for want of invention and was therefore incapable of being infringed by the defendant (appellee).

The issues of validity and infringement of the patent were tried to Judge Van Pelt, sitting by assignment in the Southern District of Iowa. His opinion, determining the issues, appears in 197 F.Supp. 54. It requires no elaboration, explanation or rephrasing by this Court. The case was carefully and competently tried and decided.

The question whether an improvement involves mere mechanical skill or involves the exercise of the faculty of invention is, if at all doubtful, a question of fact, and a finding either way upon that question by a trial court is conclusive on appeal unless clearly erroneous. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446-447, 44 S.Ct. 533, 68 L.Ed. 1098; Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274-275, 279, 69 S.Ct. 535, 93 L.Ed. 672; Hall Laboratories, Inc. v. Economics Laboratory, Inc., 8 Cir., 169 F.2d 65, 66-67; Trico Products Corporation v. Delman Corporation, 8 Cir., 180 F.2d 529, 530; Weil-Kalter Mfg. Co. v. Sel-Mor Garment Co., 8 Cir., 205 F.2d 535; Steffan v. Weber Heating & Sheet Metal Co., 8 Cir., 237 F.2d 601, 602.

When a trial court in a patent case has followed proper legal standards in determining the question of the presence or absence of patentable invention, its finding upon that issue, if sustained by the evidence, will not be disturbed on appeal. See and compare: Thomson Spot Welder Co. v. Ford Motor Co., supra; Trico Products Corporation v. Delman Corporation, supra; Weil-Kalter Mfg. Co. v. Sel-Mor Garment Co., supra; Steffan v. Weber Heating & Sheet Metal Co., supra. A finding that an invention is patentable, if the finding is based upon the application of improper legal standards or is not sustained by adequate evidence, is, of course, clearly erroneous. Caldwell v. Kirk Manufacturing Co., 8 Cir., 269 F.2d 506, 508-509.

Since we are convinced from our examination of the record on appeal that there was ample evidence to sustain the trial court's determination that the Harmon patent in suit was invalid for want of invention, we shall not discuss in detail the history of the prolonged efforts of Harmon to devise some claim or claims for a spot carbon machine or method which the patent office would regard as constituting invention and would allow.

We note that in his application for the patent in suit, Harmon said:

"This invention relates to a rotary wax spot carbon coating machine and method, and the present application is a continuation in part of my copending patent application Serial Number 165,946

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