331 F.2d 974 (6th Cir. 1964), 15025, Bain v. M.A. Hanna Co.

Docket Nº:15025.
Citation:331 F.2d 974, 141 U.S.P.Q. 559
Party Name:Charles Kremer BAIN, Plaintiff-Appellant, v. The M. A. HANNA COMPANY, Defendant-Appellee, and Blaw-Knox Company, Intervenor-Appellee.
Case Date:May 18, 1964
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

Page 974

331 F.2d 974 (6th Cir. 1964)

141 U.S.P.Q. 559

Charles Kremer BAIN, Plaintiff-Appellant,

v.

The M. A. HANNA COMPANY, Defendant-Appellee, and Blaw-Knox Company, Intervenor-Appellee.

No. 15025.

United States Court of Appeals, Sixth Circuit.

May 18, 1964

Walter J. Blenko, Sr., Pittsburgh, Pa. (Paul Rahm, Iron Mountain, Mich., Walter J. Blenko, Jr., Pittsburgh, Pa., on the brief), for appellees.

Before MILLER and CHCIL, Circuit Judges, and THORNTON, District Judge.

THORNTON, District Judge.

Plaintiff appeals from a judgment of the District Court holding that (1) all of the claimed novel features of Bain Patent No. 2,667,750 had been described in the cited prior art and specifications, (2) Bain Patent No. 2,667,750 is lacking in novelty and invention, and (3) the method used by defendant in the sinking of the Homer-Wauseca shaft was neither a copy nor was it the equivalent of the method described in Bain Patent No. 2,667,750. This determination concluded an action for damages for alleged infringement of a patent covering a 'method and apparatus for sinking mine shafts,' being United States Patent No. 2,667,750 issued to plaintiff-appellant February 2, 1954.

The opinion of the District Judge recites that:

'After the complaint was filed the plaintiff, a resident and citizen of St. Louis, Missouri, consented to the intervention of the Blaw-Knox Company, a Delaware corporation, and the intervening defendant became the actual defendant in the case in place of M. A. Hanna Company, an Ohio corporation. Prior to trial it was agreed by counsel for all parties that any error in the description of the original defendant or the nature of its entity, whether a corporation or partnership, or the name of the actual owner of the premises involved,

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could be considered as waived by the Court, and that the Court should limit itself to the determination of the validity of the patent, whether the patent was infringed by the intervenor (* * *) Blaw-Knox Company, and the extent of damage sustained by the plaintiff, if any.'

'The alleged infringement took place during the construction of a mine shaft described as the Homer-Wauseca shaft at Iron River, Michigan, within the Northern Division of the Western District of Michigan. The alleged acts of infringement are claimed to have occurred during the years 1956 to 1959. This Court is asked to consider only Claims 1, 2, and 3 of the patent in suit, all of which relate to a method for the sinking of a concrete lined circular mine shaft.'

The main thrust of plaintiff's contention here, as advanced in briefs and argument, is best stated in plaintiff's own language, appearing in his brief, as follows:

'It is plaintiff's position and conviction that the court held the patent invalid without considering it as a method or related series of process steps, but only as an unrelated series of mechanical devices. Nowhere in the Court's Opinion is there any statement setting forth the Bain method.

'This basic error of law led the trial court into a completely erroneous approach to the patent. And indeed, the court was caused to make some findings that are factually in error as to what plaintiff's method is.

'The trial court conceded that it did not understand plaintiff's position as to novelty, a confusion entirely understandable if the court was attempting to understand the Bain method in terms of a collection of mechanical elements.'

Preliminarily, we will appraise the foregoing criticism in the light of what the record before us discloses. In his opinion the District Judge stated that 'It was with difficulty that the Court determined from plaintiff's proofs and arguments the elements of novelty upon which the plaintiff relied.' We appreciate here on review the District Court's 'difficulty' as we attempt to reconcile the content of plaintiff's briefs and argument with the testimony and exhibits. Because of plaintiff's insistence that the District Judge was confused in his deliberations, a few excerpts from the transcript of the trial court proceedings will perhaps serve to pinpoint the source of any confusion that may have become inherent in the totality of the lower court record. The following colloquy between the District Judge and plaintiff's counsel is illuminating in this regard:

'The Court: Is that going to be material? Isn't the language perfectly clear, Mr. Cohn? I mean, is there any confusion in your mind as to the meaning of that?

'Mr. Cohn: Yes, I think that there is, there may be, because 'supporting' could well mean 'stabilizing,' and that is what I think the patentee means to infer as to the use of those jacks.

'The Court: Are the terms 'stabilizing' and 'supporting' synonymous?

'Mr. Cohn: No, they are not.

'The Court: Then if the term 'supporting' is used in the patent, it means 'supporting,' doesn't it?

'Mr. Cohn: Yes.

'The Court: And you can't substitute the word 'stabilizing,' can you?

'Mr. Cohn: No, that is true, you cannot.

'The Court: Then let's stick to the language in the patent. That is my point, Mr. Cohn.'

Another excerpt of interest in a similar vein is from an examination of plaintiff by his own counsel. It reads as follows:

'Q. Well, is that concrete in comparison or is it in tension or--

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'A. It is in a semi-plastic or nonsupporting condition; I mean, right after the initial set. So the entire weight of the concrete has to be kept in a quiet, immobile form.

'Q. Isn't it fair to say that the concrete at the bottom of the form that has been at the early stage of the pour is in a much more solid state than that at the top?

'A. True.

'The Court: Wouldn't that depend on how long it took to pour?

'Mr. Cohn: Yes; yes, it would.

'The Court: You know, Mr. Cohn, we are going to take a recess, but the last five minutes sounded like rather graceful cross-examination.

'Mr. Cohn: All right, I will be more careful, Your Honor.'

A third excerpt we deem helpful to set forth is from the testimony of an expert produced by plaintiff. It follows:

'Q. You made mention of jacks being employed for the purpose of locating the form; I think you referred to the Stein deposition in that regard.

'Will you not agree that the use of jacks to move a heavy object which is resting on muck or on ground or any sort of a base is one of the oldest expedients in the engineering art?

'A. Certainly. Even a car jack does lifting of the car.

'Q. Yes. You don't attribute any genius to Mr. Bain in supplying the idea of using a jack to move or position a form, do you?

'A. No, but I think the wording is a little wrong. I don't think he uses it to move the form. I think he uses it to tighten up, to get pressure vertically, and that prevents lateral stability. But this is just one method of doing it.

'The Court: It prevents lateral stability, Dean Fisher?

'The Witness: I am sorry; it prevents lateral mobility.

'Q. There is nothing new about that, either, is there?

'A. I don't think so.'

As part of plaintiff's theory of confusion on the part of the Trial Judge, plaintiff asserts that there was error in considering the Bain method claims as if they were claims for structural combinations. We assume that the basis of plaintiff's contention in this regard is the reference by the District Judge, in his opinion, to the use of certain apparatus and/or structural combinations in describing the function of the Bain method. In making this charge plaintiff apparently has lost sight of the fact that Bain Patent No. 2,667,750 is headed 'METHOD AND APPARATUS FOR SINKING MINE SHAFTS' and that each of Claims 1, 2 and 3 of that patent, which the plaintiff here alleges has been infringed, is headed 'The Method of Sinking Mine Shafts,' and that each claim then goes on to place structural parts or forms in certain positions so that the method of sinking a mine shaft can function as per the claims. Supportive of the propriety of the Trial Judge's use of structural or apparatus terms in his consideration of the patent in suit is the following statement made by counsel for plaintiff at the trial of this cause:

'Mr. Cohn: 1 I don't intend to say that certainly a patentee is not entitled to-- let me go back for just a minute, Your Honor. I say that my point is that a patentee is entitled to all of the functions that naturally flow from a piece of apparatus in his patent, whether he has described all of those functions or purposes or not.'

The last few excerpts we wish to set forth here serve to make abundantly clear, we think, that plaintiff's contention as to the 'confusion' of the Trial Judge

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is unfounded. The excerpts are as follows:

'Mr. Kingsland:1 Well, everyone has his own theory about how to try a case. Here is the point, as I see it. Your Honor has exhibited a clear knowledge of the background of this case. A record for a court of appeals doesn't have that aspect at all. And it seems to me that the record has got to be so that the court of appeals could understand it in the event of an appeal.'

and

'The Court: If I understand you correctly, it is the plaintiff's position that what has been referred to as the Bain method as outlined in the specifications and claims of the patent in suit describes a method for sinking a circular concrete-lined shaft with...

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