Fromson v. Western Litho Plate and Supply Co.
| Decision Date | 04 August 1988 |
| Docket Number | Nos. 88-1039,88-1061,s. 88-1039 |
| Citation | 853 F.2d 1568,7 USPQ2d 1606 |
| Parties | Howard A. FROMSON, Plaintiff-Appellant, v. WESTERN LITHO PLATE AND SUPPLY CO. and Bemis Company, Inc., Defendants/Cross-Appellants. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
John E. Lynch, Felfe & Lynch, New York City, argued for plaintiff-appellant. With him on the brief was Alfred H. Hemingway, Jr.
John K. Roedel, Jr., Senniger, Powers, Leavitt & Roedel, St. Louis, Mo., argued for defendants/cross-appellants. With him on the brief was Edward J. Hejlek.
Before MARKEY, Chief Judge, NICHOLS, Senior Circuit Judge, and BISSELL, Circuit Judge.
Appeal and cross-appeal from a judgment of the United States District Court for the Eastern District of Missouri, Eastern Division, 5 USPQ2d 1328 (1987), that Western Litho Plate and Supply Co. (Western) 1 infringed and failed to show invalid U.S. Patent No. 3,181,461 ('461 patent) of Howard A. Fromson (Fromson) and that Fromson was entitled to "royalties at 0.825%" on the infringing products, "subject to prejudgment interest." We affirm in part, vacate in part, and remand.
Lithography, Fromson's invention, the prior art, and the proceedings in the United States Patent and Trademark Office (PTO), are described in earlier opinions. See 5 USPQ2d at 1538; Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 219 USPQ 1137 (Fed.Cir.1983) (Fromson I ); Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549, 225 USPQ 26 (Fed.Cir.1985) (Fromson II ); Fromson v. Advance Offset Plate, Inc., 837 F.2d 1097 (Fed.Cir.1987) (Fromson III ) (unpublished).
After a bench trial conducted February 17 through March 5, 1987, the court entered this judgment on September 30, 1987:
IT IS HEREBY ORDERED, ADJUDGED and DECREED that judgment be and it is entered in favor of plaintiff on his complaint.
IT IS FURTHER ORDERED, ADJUDGED and DECREED that defendant shall pay plaintiff royalties at the rate of 0.825% on its infringing products, subject to prejudgment interest.
The court accompanied its judgment with a Memorandum Opinion setting forth a complete set of findings and conclusions on validity, infringement, and laches, and citing the evidence supporting those findings.
The court's sole reference to willful infringement and attorney fees is:
The Court does not find wilful infringement by Western such as would support a treble damage award. Neither does the Court find this to be an appropriate case for the award of attorneys' fees.
The court's sole reference to prejudgment interest is the same as that appearing in the judgment; i.e., "subject to prejudgment interest." Id.
Respecting damages, the court arbitrarily selected a "10% standard profit," id. at 1333, and hypothesized that a willing licensee would pay one-quarter of the portion of that profit "attributable to the invention." Id. at 1333-34. The court then attributed one-third of the profit to Fromson's invention, arriving at a royalty rate of 0.825%. Id. at 1334. 2
Western says: the patent is invalid on numerous grounds; there was no infringement; and this suit is barred by laches.
Fromson says: Western's infringement was willful; this is an exceptional case warranting attorney fees; the district court should have set a beginning date and rate of prejudgment interest; and the damage award is inadequate.
This is the eighty-fourth case in which the court has been forced, ad nauseum, to remind counsel that it is a court of review, i.e., that it will not find the facts de novo, that it is not a place for counsel to retry their cases, that its judges do not participate as advocates to fill gaps left by counsel at trial, and that the function of appellant's counsel in relation to the district court's findings is to show that those findings are clearly erroneous or, if correct, cannot support the district court's legal conclusion.
Obviously, a finding not made cannot be reviewed; nor can a naked phrase for which no basis is set forth be deemed a reviewable finding. Nonetheless, the parties here argue strenuously and at length for what they should know is not available on appeal, i.e., original findings. Western, in addition, seeks its fresh set of findings and conclusions in frequent disregard not only of the district court's findings and conclusions, but of the underlying evidentiary support cited by the court.
Because, as above indicated, Western's arguments disregard too much of what the district court said and did, a full recitation and refutation of each of those arguments would serve no useful purpose and would unduly lengthen this opinion. We detain the reader only long enough to indicate that we have carefully considered each of Western's arguments.
Western attacks the determination that it did not carry its burden under 35 U.S.C. Sec. 282 by firing a shotgun at the district court. The charges include: elevating the section 282 presumption to an unsurmountable level; making no independent evaluation of the prior art; "ignoring" Western's new reference; summarily rejecting Western's attack on the reissue proceedings; placing uncritical reliance on "flawed" decisions on the Fromson patent in the PTO and in this court; relying on "nonexistent" evidence of failure of others; equating obviousness with anticipation; unfairly rejecting Western's effort to establish prior invention by Western and six others as invalidating under either 35 U.S.C. Sec. 102 or 35 U.S.C. Sec. 103; and failing to find that Western reduced to practice and tested certain plates before Fromson's filing date.
Western interprets Fromson's prosecution history as limiting the claims to plates without graining, and asserts that claim 4 is not infringed because bichromated polyvinyl alcohol materials are not the same as or the equivalent of diazo resin.
That Fromson distinguished his invention from plates that were only grained did not preclude infringement by Western's grained-and-anodized plates, as the district court correctly found. Thus Western's prosecution history argument must be rejected as based on a clear misinterpretation, and the district court's finding of infringement must be affirmed.
As with anticipation of claim 7, supra n. 4, Western's assertion regarding claim 4, if it were true, could not affect the outcome. Western has failed, in any event, to show that the district court's finding of infringement of claim 4 is clearly erroneous. 5
Western's argument that Fromson had no excuse for delaying his suit simply disregards the court's findings that Fromson had no means of learning of infringement until 1974, 5 USPQ2d at 1333, and that "Fromson established that Western deliberately sought to conceal its process throughout the 1970's." Id. Also unmentioned in Western's argument is its own recognition at pretrial conferences that Fromson was engaged in suit with other infringers. Western's effort to obtain from this court an evaluation of evidence different from that of the district court must fail. Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 573-74, 105 S.Ct. 1504, 1511, 84 L.Ed.2d 518 (1985) (). The district court recognized that Western may have been caused some prejudice in its efforts to prove its own prior invention, but laches is an equitable issue, and in balancing the equities the court found that the delay was not due to any bad faith on Fromson's part and declined to "bar plaintiff's recovery through laches." 5 USPQ2d at 1333. Western has not shown that decision
to have been in any manner reversible. 6
The district court's treatment of willfulness, attorney fees, prejudgment interest, and damages requires a regretted remand of those issues. Neither party gave the district court, by motion under Fed.R.Civ.P. 59(e), a chance to clarify or expand its statements on those issues. Had either done so, a remand would have presumably been avoided. Nickson Indus., Inc. v. Rol Mfg. Co., 847 F.2d 795, 801 n. 4, 6 USPQ2d 1878, 1882 n. 4 (Fed.Cir.1988).
From the single sentence touching the subject, one cannot say what the finding was on willfulness. The most one can say is that Western's infringement was found willful, but insufficiently willful to warrant treble damages. We are in the dark, however, on whether the court considered Western's infringement sufficiently willful to warrant some other level of increased (e.g., doubled) damages, or whether the court was under a mistaken impression that a...
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