Dresser Industries, Inc. v. Smith-Blair, Inc.
| Decision Date | 23 December 1963 |
| Docket Number | No. 17771.,17771. |
| Parties | DRESSER INDUSTRIES, INC., a Corporation, Appellant, v. SMITH-BLAIR, INC., a Corporation, Appellees. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Edward B. Gregg, San Francisco, Cal., and Robert E. Burns, New York City, for appellant.
A. Donham Owen, Melville Owen and Roger W. Erickson, San Francisco, Cal., for appellees.
Before CHAMBERS, BARNES and MERRILL, Circuit Judges.
Appellee Smith-Blair, Inc., brought this action to obtain a declaratory judgment declaring invalid claims 1 to 8 of United States Patent No. 2,897,568, the Hoke patent, relating to a flexible band-type repair clamp used primarily for repairing breaks and other leaks in underground water distribution systems, owned by Dresser Industries, Inc., a corporation. Appellant counterclaimed alleging infringement by appellee of the same alleged valid Hoke patent.
The trial court, having jurisdiction under 28 U.S.C. §§ 1338(a), 1400(b) and 2201, rendered a declaratory judgment holding claims 1 to 8 of the Hoke patent invalid, and dismissing appellant's counterclaim for infringement.
Jurisdiction on appeal is based on 28 U.S.C. § 1291.
Certain facts are undisputed:
Claims 1 to 8 of the 1959 Hoke patent describe the following: a "conduit clamp" comprising a thin, flexible metal band, split so that it may be extended around a "conduit"; a pair of lugs, i. e., bars, secured respectively to the two ends of the band, the lugs facing each other and having aligned bolt holes; bolts extending through the holes and operative to draw the lugs toward one another, the pull of the bolts as they are tightened tending to roll the lugs toward each other; each of the lugs having a plurality of bearing surfaces and a plurality of arms alternately arranged; the arms projecting beyond the lug on which they are placed, overlapping the bearing surfaces of the other lug so as to resist the rolling of the lugs by the pull of the bolts; the arms of each lug being slidable on the bearing surfaces of the other lug in a direction parallel to the bolts to guide the lugs as they are drawn toward each other by the bolts. Close to each bolt are three arms, one on one lug, and two others on the opposite lug; which two arms slide on either side of the opposing one lug as the bolt is tightened. (R. 847.)
Claims 8 through 12 of the Hoke patent, though not held invalid by the trial court, are mentioned in certain disputed findings of fact and therefore must be set forth here.
They describe the means used to secure the lug, i. e., a bar, to one end of the flexible band: each of the lugs having an elongated lip adjacent the conduit and an elongated recess between the lip and the body portion of the lug, each of the ends of the band passing between the conduit and a lug and being bent back over a lip with the end of the band in the recess, a wire being provided along the end of the band, each of the lugs also having a malleable finger projecting forwardly from the body portion of the lug and bent down over the end portion of the band to grip the end portion between the finger and the lip and secure the wire in the recess, the end portion of the band being bent at least part way around the wire. (R. 847.)
The Hoke patent device (claims 1 through 12) operates to press a lining of rubber or other material, called a gasket, against the pipe to seal off a break or leak.
Early flexible band-type pipe repair clamps were subject to a similar disability; i. e., when the bolts were tightened too tight, a tendency existed for the lugs to "roll," or tilt toward each other, and bend the bolts; this frequently made it impossible to sufficiently tighten the band. The Hoke device was not subject to this disability.
Appellant lists a number of alleged errors on the part of the trial court, set forth under three headings: "Points of Appeal," "Errors in * * * Findings of Fact," "Errors in Conclusions of Law."
The sixteen "Points of Appeal" are the following:
1. The failure to apply the proper tests and standards to determine as a matter of law the patentability of the invention and the validity of the claims in suit, and in applying improper tests.
2. The failure to make findings as to the facts which preceded, attended and succeeded the appearance of the invention of the patent in suit, and which support the presumption of validity.
3. The making of erroneous findings on contradicted and unsupported opinion testimony of plaintiff's witnesses through failure to test such testimony by recognized legal standards as to the qualifications, expertness, interest and prejudice of such witnesses, and through an erroneous view of the law.
4. In holding that the presumption of validity attaching to the grant of the patent in suit was rebutted by the absence of any citation of the Lindsay patent No. 512,406, issued by the British Patent Office, where (a) the British patent was in a nonanalogous art, and (b) the plaintiff did not satisfy its burden of proof in showing that the British patent had not been considered by the Patent Office Examiner.
5. In attaching any anticipatory significance to the Lindsay patent or to the Lindsay catalogs, both relating to adapters for converting ordinary bolts into hook bolts and in no way relating to the full circumference pipe repair clamps claimed in the patent in suit.
6. In considering Exhibits 5 and 6 alleged to have been made by plaintiff in 1953 to be a part of the prior art, where testimony of plaintiff's own witnesses established that there was but an unsuccessful experiment and no public use or sale of the device.
7. In holding the claims of the patent in suit invalid under Section 102(b) of Title 35 United States Code, on the grounds that they were anticipated by tapping tees sold by plaintiff to Dominguez Water Company over a year before the Hoke application was filed.
8. In holding that plaintiff had satisfied its burden of proof in establishing that the patent in suit was invalid, where testimony by witnesses of both parties reinforced the presumption of validity attaching to the grant of the patent.
9. In admitting into evidence plaintiff's Exhibits 63, 64, 14, 15, 17, 80 and 81 over the defendant's objection that these drawings and devices were irrelevant, since they are not prior art; and if they purport to represent prior art, they are not the best evidence.
10. In combining the teachings of the Lindsay patent and "Lindapter catalogs" with testimony of plaintiff's witnesses as to activities alleged to constitute prior art; and thereby finding invalidity of the patent in suit, where the combination was taught only by defendant's patent and not by the prior art.
11. In finding that the invention of the patent in suit had copied plaintiff's "2-F" form of connection, where it is clear from an inspection of the devices that this is not true.
12. In denying defendant's motions to produce documents (R. 12, 15-27, 37) and thereby precluding defendant from offering evidence relevant to the validity of the patent in suit.
13. In adopting without modification findings submitted by plaintiff which were contrary to the evidence and law.
14. In making conclusions of law not supported by the findings.
15. In holding that claims of the Hoke patent cannot be infringed by plaintiff's pipe repair clamp allegedly copied from an identical clamp in public domain since 1939, where evidence of infringement was clear and unrebutted and comparisons of devices and history of the development show that the accused device was copied from defendant's pipe repair clamp and not from a prior art device.
16. In denying defendant's motion to amend the judgment.
Appellant challenges twenty-four of the findings of fact. Under Fed.R.Civ.P. 52(a), "* * * Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses. * * *"
A finding will be held "clearly erroneous" when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed. Hoppe v. Rittenhouse, 9 Cir. 1960, 279 F.2d 3.
In considering the record in this case it becomes immediately clear that much of the dispute between the parties as to the findings made in the trial court resolves itself into a question of semantics — what is a "pipe clamp," and what are the parts or components making it up? It seemed necessary to this court, on oral argument, (as it does here) to refer to three separate components of any flexible, band-type pipe repair clamp as: (a) the split band, (b) the clamping component, and (c) the connecting component.
When thus analyzed we discover in the findings objected to some language which might well be characterized as ambiguous. Yet when fairly interpreted and made reasonably applicable to the facts existing before the trial court, we find no reversible error in the findings. We consider each such alleged error in the margin.1
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
COPYRIGHT MATERIAL OMITTED
Appellant urges that one "basic question" is whether the district court, "in determining patentability should accept the self-serving opinion testimony of plaintiff's president or should be guided by uncontroverted facts preceding, attending and succeeding the emergence of the invention which clearly show that it was not obvious." Such "argument," with the two pages that follow it in defendant-appellant's brief (Brf. pp. 16-17), reads nicely, but aids the appellate court little in defining or meeting the actual issues.
Appellant continually refers to "the problem" which it asserts the Hoke patent solved and which Telford...
To continue reading
Request your trial
-
Ab Iro v. Otex, Inc.
...of the Patent Office to cite a single patent may be sufficient to defeat the presumption of validity, Dresser Industries, Inc. v. Smith-Blair, Inc., 322 F.2d 878 (9th Cir.1963), the presumption does not automatically cease to exist on showing that a prior art patent was not cited by the Pat......
-
Bull v. Logetronics, Inc., Civ. A. No. 4196.
...235 (CA 7, 1967); Monroe Auto Equipment Co. v. Superior Industries, Inc., 332 F.2d 473, 481 (CA 9, 1964); Dresser Industries, Inc. v. Smith-Blair, Inc., 322 F.2d 878, 888 (CA 9, 1963); Filmon Process Corp. v. Spell-Right Corp., 131 U.S.App.D.C. 374, 404 F.2d 1351, 1353 (1968). In such a sit......
-
McCULLOCH MOTORS CORPORATION v. Oregon Saw Chain Corp.
...Hdw. Mfg. Corp. (9 Cir. 1961) 287 F.2d 228; Pressteel Co. v. Halo Lighting Corp. (9 Cir. 1963) 314 F.2d 695; Dresser Industries Inc. v. Smith-Blair, Inc. (9 Cir. 1963) 322 F.2d 878. That being so, it follows that if the prior art is directed to the same problem and solves it in substantiall......
-
Sonobond Corporation v. Uthe Technology, Inc.
...an action for infringement. Wham-O Mfg. Co. v. Paradise Manufacturing Co., 327 F.2d 748 (9th Cir. 1964); Dresser Industries, Inc. v. Smith-Blair, Inc., 322 F.2d 878 (9th Cir. 1963); and Coast Metals, Inc. v. Wall Colmonoy Corporation, 315 F.2d 416 (9th Cir. In general, a summary judgment sh......