BF Goodrich Company v. Rubber Latex Products, Inc., 17643.

Citation400 F.2d 401
Decision Date27 September 1968
Docket NumberNo. 17643.,17643.
PartiesThe B. F. GOODRICH COMPANY, Plaintiff-Appellant, v. RUBBER LATEX PRODUCTS, INC. and Harrison & Morton Laboratories, Inc., Defendants-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (6th Circuit)

Arthur L. Cain, Cleveland, Ohio, for appellant, Charles E. Herrstrom, Bosworth, Sessions, Herrstrom & Knowles, Cleveland, Ohio, on the brief, Harold S. Meyer, Akron, Ohio, of counsel.

Paul A. Weick, Akron, Ohio, for appellees, Paul A. Weick, Weick & Genovese, J. William Freeman, Freeman & Taylor, Akron, Ohio, on the brief.

Before O'SULLIVAN, PHILLIPS and COMBS, Circuit Judges.

PHILLIPS, Circuit Judge.

The District Court dismissed this action for infringement of United States Patent No. 2,330,370, which covers a method and apparatus for the continuous manufacture of long length rubber latex tubing. Plaintiff appeals.

Infringement by defendants of claims 4, 10, 16, 17 and 18 of the patent was admitted by stipulation.

In scanty findings of fact which contain little more than generalized conclusions, the District Court held the claims to be invalid on four grounds: (1) that the claimed invention had been anticipated by the prior art; (2) that the claimed invention was nothing more than an improvement over the prior art that would have been obvious to anyone skilled in the art; (3) that the invention had been in public use or on public sale more than two years prior to the filing of the application for the patent; and (4) that plaintiff's assignor was not the sole inventor. On a fifth ground plaintiff was held to be estopped by the defense of laches.

1) Insufficiency of findings of fact

Rule 52(a), Fed.R.Civ.P., requires that in all actions tried on the facts without a jury, the District Court "shall find the facts specially and state separately its conclusions of law thereon." The findings of fact and conclusions of law in the present case are made an appendix to this opinion.

The purpose of findings of fact under this rule were stated by the advisory committee as follows:

"Findings of fact aid in the process of judgment and in defining for future cases the precise limitations of the issues and the determination thereon. Thus they not only aid the appellate court on review, Hurwitz v. Hurwitz, 1943, 136 F.2d 796, 148 A.L.R. 226 78 U.S.App.D.C. 66, but they are an important factor in the proper application of the doctrines of res judicata and estoppel by judgment. Nordbye, Improvements in Statement of Findings of Fact and Conclusions of Law, 1 F.R.D. 25, 26-27; United States v. Forness, C.C.A.2, 1942, 125 F.2d 928, certiorari denied City of Salamanca v. United States, 62 S.Ct. 1293, 316 U.S. 694, 86 L.Ed. 1764" Rule 52, Fed.R.Civ. P., Notes of Advisory Committee.

As explained by the notes of the Advisory Committee, this rule contemplates that the District Judge shall make "brief, definite, pertinent findings and conclusions upon the contested matters." Although there is no necessity for "over-elaboration of detail or particularization of facts," the Supreme Court has held that: "Statements conclusory in nature are to be eschewed in favor of statements of the preliminary and basic facts on which the District Court relied. * * * Otherwise, their findings are useless for appellate purposes." Dalehite v. United States, 346 U.S. 15, 24, n. 8, 73 S.Ct. 956, 962, 97 L.Ed. 1427. To support conclusory determinations "there must be findings, in such detail and exactness as the nature of the case permits, of subsidiary facts on which the ultimate conclusion * * * can rationally be predicated." Kelley v. Everglades Drainage District, 319 U.S. 415, 420, 63 S.Ct. 1141, 1144, 87 L.Ed. 1485. The Court further said: "There must be findings, stated either in the court's opinion or separately, which are sufficient to indicate the factual basis for the ultimate conclusion." 319 U.S. at 422, 63 S.Ct. at 1145.

In Deal v. Cincinnati Board of Education, 369 F.2d 55, 63-64 (6th Cir.), cert. denied, 389 U.S. 847, 88 S.Ct. 39, 19 L.Ed. 2d 114, this Court said:

"Under Rule 52(a) the court was required to find the facts specially. The findings should be both `comprehensive and pertinent to the issues to provide a basis for decision.\' Schilling v. Schwitzer-Cummins Co., 79 U.S.App. D.C. 20, 142 F.2d 82, 84 (1944); Shapiro v. Rubens, 166 F.2d 659 (7th Cir. 1948). In meeting this standard, the District Courts are not required to prepare elaborate findings on every possible issue or contention raised at trial. However, there must be subsidiary findings to support the ultimate conclusions of the court."

In Welsh Co. of California v. Strolee, 290 F.2d 509, 511 (9th Cir.), an action for patent infringement, the Court said:

"We think it is the duty of the District Court to find the facts and not to leave to us the heavy chore of reviewing sundry, contradictory assumptions any of which could have led to the conclusory statements misnamed Findings of Fact in the present record.
"`Findings of fact are required under Rule 52(a), Federal Rules of Civil Procedure * * *. The findings should be so explicit as to give the appellate court a clear understanding of the basis of the trial court\'s decision and to enable it to determine the ground on which the trial court reached its decision. * * * This court is not the trier of facts, nor does it substitute its own judgment for that of the trial court.\' Irish v. United States, 9 Cir., 1955, 225 F.2d 3, 8."

Accord: Ceramic Tilers Supply, Inc. v. Tile Council of America, 378 F.2d 283 (9th Cir.); Yavitch v. Seewack, 323 F.2d 561 (9th Cir.); National Lead Co. v. Western Lead Products Co., 291 F.2d 447, 451 (9th Cir.); Hycon Manufacturing Co. v. H. Koch & Sons, 219 F.2d 353, 356 (9th Cir.), cert. denied, 349 U.S. 953, 75 S.Ct. 881, 99 L.Ed. 1278; United Shoe Machinery Corp. v. Kamborian, 160 F.2d 461, 464-465 (1st Cir.).

In 4 Deller, Walker on Patents § 900 at 3068 (1937) it is said: "Findings which are contested should be put in such detail as will decide each contest made concerning them."

We hold that the findings of fact of the District Court are insufficient to meet the requirements of Rule 52(a).

2) The Invalidity of Patent in Suit

In view of the foregoing it would be appropriate for this Court to vacate the judgment of the District Court and remand the case for sufficient findings of fact under Rule 52(a). Welsh Co. of California v. Strolee, supra, 290 F.2d 509, 514 (9th Cir.); Metalock Repair Service, Inc. v. Hartman, 258 F.2d 809, 816 (6th Cir.). However, in order to avoid further extension of this protracted litigation, we proceed to dispose of the appeal on its merits despite the insufficiency of the findings of fact.

The patent in suit (the Miller patent) was issued to plaintiff-appellant (Goodrich) as assignee of the designated inventor on September 28, 1943. This action for infringement was not instituted until December 9, 1960, more than seventeen years after the issuance of the patent and three months after its expiration.

Donald J. Miller was employed as a research technician by the Miller Rubber Co. immediately after his graduation from college in 1929. After the Miller Company was merged with Goodrich he continued in the employ of Goodrich until 1946. He was trained and worked under the direction of Dr. H. A. Morton, director of research. Dr. Morton's supervisor was Dr. M. H. Harrison, technical superintendent and chief chemist for the Miller Rubber division of Goodrich.

The patent in suit involves the use of mandrels in the continuous manufacture of long length rubber latex tubing. A mandrel, as used in the patent and defined at the trial, is a temporary support for use during formation of the product. It is removed during subsequent manufacturing procedure and does not itself become part of the product. In the process here involved, the mandrels are used over and over again by recoupling them end to end for passage through the latex bath.

In 1933 or 1934 Dr. Harrison formed a corporation known as Ella Jewell, Inc., which manufactured foot appliances by progressively passing filamentary mandrels through a dispersion, with the sponge rubber mandrels being tied end to end to achieve continuous operation. The mandrels used in the Ella Jewell process were purchased from Goodrich. They differed from the mandrels here involved in that they became a part of the manufactured product.

On February 10, 1937, Donald J. Miller approached Dr. Morton and disclosed to him an idea that ultimately led to the development of the process for the manufacture of long length latex tubing as taught by the Miller patent. Following this disclosure Miller, Dr. Morton, Dr. Harrison and other Goodrich personnel worked together and developed the method of producing long length latex rubber tubing resulting in the process set forth in the Miller patent. Appellee contends that all these men worked together so closely on this project that it was next to impossible at the trial to determine who actually contributed any specific aspect of the development of the process.1

Donald J. Miller filed an application for the patent in suit on June 5, 1940. Dr. Harrison and Dr. Morton had no knowledge of this filing at that time.

Drs. Harrison and Morton left Goodrich in 1939 and organized the appellee corporation in 1940. During that same year Dr. Harrison applied for a patent on a process of manufacturing latex tubing by means of progressively running mandrels over a series of pulleys, thereby subjecting the mandrels to repetitive dippings in a latex compound. Patent No. 2,327,638 was issued to Dr. Harrison on August 24, 1943.

When they learned of the issuance of the Miller patent in 1943, Dr. Harrison and Dr. Morton took steps to investigate the Miller patent as it related to Dr. Harrison's patent. On January 12, 1944, Dr. Harrison was advised by his patent counsel that he need not be concerned about the Miller...

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