George R. Churchill Company v. American Buff Co.

• Decision Date: 13 July 1966
• Docket Number: No. 15160.,15160.
• Parties: GEORGE R. CHURCHILL COMPANY, Inc., Plaintiff-Appellant, v. AMERICAN BUFF COMPANY, Automatic Buff Co., Inc., Duluth Buff Co., Inc., and Speedway Buff Co., Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

365 F.2d 129 (1966)

GEORGE R. CHURCHILL COMPANY, Inc., Plaintiff-Appellant, v. AMERICAN BUFF COMPANY, Automatic Buff Co., Inc., Duluth Buff Co., Inc., and Speedway Buff Co., Inc., Defendants-Appellees.

No. 15160.

United States Court of Appeals Seventh Circuit.

July 13, 1966.

Harry W. F. Glemser, Washington, D. C., Robert R. Churchill, Boston, Mass., George N. Hibben, Chicago, Ill., for appellant.

Theodore W. Anderson, Jr., Sidney Neuman, Joseph P. Calabrese, Chicago, Ill., for appellees.

Before MAJOR, Senior Circuit Judge, and KNOCH and CASTLE, Circuit Judges.

CASTLE, Circuit Judge.

George R. Churchill Company, Inc., plaintiff-appellant, the owner of Churchill U.S. Patent No. 2,724,937, relating to a buffing wheel brought this suit in the the District Court against American Buff Company; Automatic Buff Co., Inc.; Duluth Buff Co., Inc.; and Speedway Buff Co., Inc., defendants-appellees, charging infringement of Claims 1, 2 and 4 of the patent. The defendants in a joint answer and counterclaim for declaratory judgment asserted, among other things, the invalidity of the patent. The court, acting pursuant to Rule 42(b) of the Federal Rules of Civil Procedure (28 U.S.C.A.), severed for separate trial the issue of whether the patent was invalid under the provisions of 35 U.S.C.A. § 102(b) because the claimed invention was in public use or on sale more than one year prior to the date of the application for the patent. Following a trial of this issue the court expressed his decision orally, stating his views as to the facts established and the law applicable, and then entered findings of fact and conclusions of law holding the patent invalid because buffing wheels incorporating the alleged invention of the patent were placed on sale and in public use by the plaintiff more than one year prior to the filing date of the application from which the patent matured. The court entered judgment dismissing plaintiff's action on the merits and that defendants recover costs. The plaintiff appealed.

The record discloses that U.S. Patent No. 2,724,937 issued November 29, 1955, on an application filed March 3, 1953. The critical date for the purposes of 35 U.S.C.A. § 102(b) is therefore March 3, 1952.

The District Court found, in substance, that a buffing wheel manufactured by the plaintiff, designated the 40-RT Buff, embodied the invention claimed in the patent and that distribution of this buffing wheel prior to March 3, 1952, made by plaintiff through its distributors to prospective customer-users constituted both a public use and a placing on sale which serve to invalidate the patent.

The main contested issues which emerge from the plaintiff's contentions on appeal may be stated to be (1) whether the trial court's factual finding that the 40-RT Buff embodied the invention claimed in the patent is "clearly erroneous", and, if not so, (2) whether the distribution made of that buffing wheel was merely part of a testing-experimentation program rather than a public use or placing on sale within the meaning of 35 U.S. C.A. § 102(b).

The identity of the 40-RT buffing wheel with the structure of the patent claims was the subject of expert testimony concerning the scope of the claims and the nature and characteristics of the structure of the 40-RT Buff. Consequently, as to this phase of the case Rule 52(a) of the Federal Rules of Civil Procedure (28 U.S.C.A.) applies, and if the court's findings in this connection find support in the evidence they are binding on review. Wahl v. Carrier Manufacturing Co., 7 Cir., 358 F.2d 1, 3; Aerosol Research Company v. Scovill Manufacturing Co., 7 Cir., 334 F.2d 751, 753; Minnesota Mining and Mfg. Co. v. Technical Tape Corp., 7 Cir., 309 F.2d 55, 57; Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 151-157.

The patent in suit relates to a buffing wheel having a central hub with radiating fingers or spokes of buffing material. Each finger has a core of twisted strands of fibrous material and a fabric covering, and the finger has a flattened cross section and is longitudinally stitched to compact the assembly. Finger buffs are widely known and were old in the prior art.

The details of the 40-RT structure as disclosed by the expert testimony as well as the physical exhibit established that it comprises a plurality of radial elements which extend outwardly from a central hub and are stapled to it. Each such finger element includes 40 strands of twisted fibres surrounded by a cloth wrapper and each finger is longitudinally stitched. The fingers or elements are disconnected from one another over a major portion of their length and the longitudinal stitching divides the strands into groups, imparts rigidity to the element, and compresses the groups of strands transversely. The strands of twisted fibres or twine used were treated with liquid latex to help hold the fibres together and to aid buffing compound to adhere thereto.

Claim 1 of the patent reads as follows:

1. A buffing wheel section having radially extending buffing elements and a hub member to which the buffing elements are secured at their inner ends, said buffing elements being disconnected from one another for a major portion of their length inwardly from the periphery of the buffing wheel section, whereby to enable the buffing elements to individually flex during a buffing operation, each buffing element comprising an assembly of twisted strands of fibrous material extending longitudinally of the buffing element; and a fibrous wrapper enclosing said assembly and having longitudinal stitching extending therethrough and subdividing the assembly into separate groups of strands and compressing said groups transversely and imparting an elongated cross section to said buffing element in a direction generally perpendicular to the axis of the buffing wheel section, the separate groups of strands cooperating with one another to impart rigidity to the individual buffing elements to resist deflection in use, and the wrapper and stitching maintaining said groups of strands in substantially the same relative relation throughout the life of the buffing elements.

Claim 2 is dependent from claim 1 and is directed to the feature of the twisted strands of fibrous material being sisal, and of a cross-sectional dimension such as that employed to produce "stout sisal twine". Claim 3 is directed to the feature of stapling the elongate elements or fingers to the hub. Claim 4 reads as follows:

4. A buffing wheel section as defined in claim 1 wherein each buffing element comprises an individual assembly of a relatively large number of cords, with each cord consisting of a few but at least two pretwisted yarns with each yarn twisted around the other yarns forming the cord, the twist of the yarns about one another being in a direction opposite to the twist in the yarns themselves whereby the opposed twists balance one another and impart resistance to any tendency of the fibres or yarns to untwist.

Plaintiff's contention that the 40-RT Buff did not embody the invention claimed in the patent is based on the premise that the expression "an assembly of twisted strands of fibrous material" as used in Claim 1, the only independent claim of the patent, must in the light of the specification be read to mean "laid" material with the result that the patent requires and its scope is limited to structures in which the radiating fingers or individual buffing elements are of laid material, i. e., twine in the construction of which two or more plies of twisted fibre are tightly plied about each other.

The patent specification describes a laid construction as follows:

"Briefly, as is well known in the rope-making art, in producing a `laid\' construction from two or more strands of twisted fibres, the original twist in each strand is maintained and controlled so as to remain substantially constant during the operation of laying the component strands around one another in producing the twine. * * * Such a `laid\' structure is characterized particularly by the absence of any tendency to untwist, and when attempt is made to untwist the `laid\' twine and the same is released, the twine resumes its `laid\' condition. * * *"

There is expert testimony that:

"An ordinary two-ply twine is not laid, it is just plied loosely, rather loosely by comparison to the laid twine which is plied very hard, making it a very tight twist similar to what you find in rope, regular ship\'s rope or manila rope."

* * * * * *

"The laid material has a very hard finish; it makes it a very hard product which holds together very tight, while the ordinary twisted is more flexible and does not hold as tightly together."

* * * * * *

"It feels harder and stiffer and certainly would not untwist as easily."

* * * * * *

"It laid material is a cord which is tightly twisted and which is what I call dynamically stable. In other words, the individual strands are twisted in one direction and then when we combine the strands we give

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