Angle v. Richardson

• Decision Date: 16 June 1938
• Docket Number: No. 8745.,8745.
• Citation: 97 F.2d 736
• Parties: ANGLE et al. v. RICHARDSON. S. S. WHITE DENTAL MFG. CO. et al. v. RICHARDSON et al.
• Court: U.S. Court of Appeals — Ninth Circuit

97 F.2d 736 (1938)

ANGLE et al. v. RICHARDSON.

S. S. WHITE DENTAL MFG. CO. et al. v. RICHARDSON et al.

No. 8745.

Circuit Court of Appeals, Ninth Circuit.

June 16, 1938.

Lyon & Lyon, of Los Angeles, Cal. (Henry N. Paul, Jr., of Philadelphia, Pa., and Frederick S. Lyon, of Los Angeles, Cal., of counsel), for appellants.

Thomas A. Reynolds and Wilbur D. Finch, both of Los Angeles, Cal. (J. Calvin Brown, of Los Angeles, Cal., of counsel), for appellees.

Before GARRECHT, HANEY, and STEPHENS, Circuit Judges.

STEPHENS, Circuit Judge.

The plaintiffs, Anna Hopkins Angle and the S. S. White Dental Manufacturing Company, a corporation, filed their bill of complaint in the District Court as owner and licensee respectively of Letters Patent No. 1,584,501,¹ granted to Edward H. Angle May 16, 1926, charging infringement by the defendant Sidney Richardson.

The trial court found for the plaintiffs and ordered an accounting and no appeal has been taken. Prior to the trial in the matter just mentioned, the defendant, having first secured leave, filed a bill of cross-complaint against the mentioned plaintiffs claiming that they had infringed patent No. 1,976,141, granted Oct. 9, 1934 to himself and Charles Edward Boyd. The grant to Boyd was as the assignee of a one-half interest in the patent. The trial court found in favor of cross-complainants and against cross-defendants on claim 2 of such patent and none other and ordered an accounting. The cross-defendants appeal from the judgment entered therein.

Both patents above mentioned relate to a metal tie-bracket but a small fraction of an inch in width, length and thickness. In use it is affixed to a band of metal which is placed around a tooth. A wire or arch-bar anchored at each end engages the central slot in the bracket. There is also an upper and a lower notch in the bracket. The arch-bar runs around the dental arch and is secured in the central slot by wire ligatures. It is an appliance used in the moving of malposed teeth to proper positions.

Tie Bracket (greatly enlarged).

Base A, B, C, (D not shown) attaches to band around tooth.

Arch-bar (shaded area) fits into slot.

Fine wire, not shown in cut, loops around end notches of bracket.

The trial court found the Dr. Angle patent valid and infringed by the Richardson patent. However in the cross-action, the Richardson patent was held valid as to claim 2 thereof and infringed by cross-defendants. Claim 2, as cross-complainant in his brief has separated it into lettered clauses, is as follows:

"2. The herein described method of producing a one piece orthodontic band bracket, which consists

"(a) in first cutting a transverse slot in the top face of a block of hard tough metal

"(b) and then simultaneously cutting transverse slots in the end portions of said block and substantially parallel to said first slot,

"(c) said cutting of said block in each instance being so effected as to retain the fibers and molecules in the uncut portions of said block in their original positions without distorting and stretching the same."

Dr. Angle was an orthodontist, a teacher of orthodontia and an inventor of appliances for "straightening" teeth. In the experimental stages he used a circular saw in a jeweler's lathe to cut his brackets from wire. The evidence shows that he sometimes cut the end notches first and sometimes the top or central slot first.

A letter dated Aug. 26, 1925 signed by Dr. Angle and addressed to White Co. contained the following: "This model bracket was sawed from a metal bar rolled, drawn and milled."

Dr. Edw. J. Gromme, graduate of the Dr. Angle school, testified that he observed Dr. Angle making experimental tie-brackets in the year 1925. He testified as follows as to the method employed:

"wire of specific dimensions was passed through this plate and under the hold-down, and carried against the saw, so that the slot could be cut in proper position. In cutting the grooves, these brackets were made in one long strip, the grooves for the arch receiving slot and the grooves for the ears of the bracket were cut longitudinally to the strip of wire. The wire was usually about eight inches long. There was not any specific routine for cutting the piece, I don't believe. I did not observe whether he cut the ears first, or whether he cut the arch receiving slot first. Sometimes they were cut one way — from the samples we have we could see they were cut sometimes one way, and sometimes the other. The samples that were found were clippings or cuttings from the lathe, which Dr. Angle kept as a matter of historic interest."

Drs. Allen G. Brodie and Chas. E. Boyd, both Angle school graduates, testified that they used the Angle tie-brackets in 1926.

After the patent was granted to Dr. Angle (patent No. 1,584,501, May 11, 1926) the S. S. White Dental Manufacturing Company acquired and exercised the licensee right to manufacture the brackets and market them to the trade and has ever since retained and exercised such right. White Company began making the bracket by saw-cutting but soon changed the method so as to produce the bracket by a stamping process from "clasp" metal. This process broke down the fibers or disarranged the molecular formation of the metal to some extent so that the bracket was less strong than the milled or lathed bracket. Under pressure it would sometimes spread and thereby interfere with the desired "pull" upon the tooth under treatment.

Sidney Richardson is a metallurgist and after meeting Dr. Angle at the latter's school began to experiment upon a possible improvement upon the Angle bracket. He, with some advice from Drs. Steiner and Boyd, worked out a model of bracket designed to withstand a greater pressure than the White stamped bracket. He compounded an alloy having a greater degree of hardness and toughness than that used by White Company. The Richardson product did not differ from the Angle bracket in principle and differed but slightly in design. The principal difference in design being that a thicker base of metal was left under the slot. The harder and tougher alloy, the thicker base and the cutting resulted in a stronger article. It appears from the evidence that some orthodontists prefer the White production with the softer metal, while others prefer the stronger bracket.

Richardson's product was completed in 1931 and manufactured and sold in 1932. Richardson and his associates were working upon improvements to the Angle bracket with Mrs. Angle's knowledge and secured her consent to the idea of approaching the White Company with a proposal that it market Richardson's bracket. Dr. Steiner went to Philadelphia and demonstrated it to the White Company. Dr. Angle had died in 1930 and Mrs. Angle succeeded to ownership of the patent.

Before Dr. Steiner went East a contract was entered into between Richardson, Steiner and Boyd, whereby Steiner and Boyd would get a royalty for every bracket that should be sold by the White Company. It would appear from the evidence that any arrangement was to contemplate the proprietary rights of Mrs. Angle in the Angle patent. There is no evidence of any thought of Richardson's getting a patent until later. Nothing ever came of the attempt to get the White Company to market the Richardson product.

Sometime after the return of Dr. Steiner, the White Company added a stronger bracket to its line by making and using a more resisting alloy of metals from which they were made, and by using a thicker base. They saw-cut or milled the metal as Dr. Angle and the White Company had originally done and as Richardson did in his product.

Richardson testifies that he gave Dr. Steiner a written formula of his alloy and claims that this was delivered to the White Company along with his bracket models and that the new strong bracket manufactured by White was a very close copy of Richardson's product in composition, form and method of manufacture.

Steiner says he never had a copy of the formula and never gave any formula to the White Company.

White Company continued to manufacture both types of brackets up to the issuance of the patent to Richardson, Oct. 9, 1934, when it suspended making brackets of any kind until Oct. 31, 1934, when it resumed manufacture without change except as to the sequence of cutting the slots and notches in the bracket composed of the stronger alloy. They avoided cutting the slots and notches in the sequence detailed in Claim 2 of Richardson's patent. Except for the short cessation in bracket making just mentioned, the White Company has continued to manufacture and market the bracket stamped from the softer metal.

Much evidence was introduced relative to the testing of metals for hardness and toughness and as to the breakdown of clasp metals under a stamping process, but in the view we take of the case such evidence need not be detailed in this opinion.

After the trial the Court prepared and filed an extensive opinion which also served as its Findings of Fact and Conclusions of Law. Therein the Court commented upon the White Company's action in suspending the manufacture of brackets and upon its avoiding the Richardson sequence of cutting slots or notches when it resumed the making of brackets. The Court said:

"This attitude is tantamount to an acknowledgement of the validity of Claim 2 of the Richardson patent in suit, as well as the infringement thereof by the White Company prior to October 31, 1934."

Appellants consider this statement as a Finding of Fact and that the Court regarded such attitude of the White Company as estopping it from denying legality of the patent and from denying infringement thereof. We take it that the Court was merely stating that such attitude was a strong circumstance that should be taken into consideration in deciding the issues there presented. Our view is supported by another passage of the opinion. The Court was referring to a letter written by Richardson in which he refused to fill an order for...