Bros Incorporated v. WE Grace Manufacturing Company

• Decision Date: 20 October 1965
• Docket Number: No. 21470.,21470.
• Citation: 351 F.2d 208
• Parties: BROS INCORPORATED, Appellant, v. W. E. GRACE MANUFACTURING COMPANY and William E. Grace, Appellees. W. E. GRACE MANUFACTURING COMPANY and William E. Grace, Appellants, v. BROS INCORPORATED, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

351 F.2d 208 (1965)

BROS INCORPORATED, Appellant, v. W. E. GRACE MANUFACTURING COMPANY and William E. Grace, Appellees.

W. E. GRACE MANUFACTURING COMPANY and William E. Grace, Appellants, v. BROS INCORPORATED, Appellee.

No. 21470.

United States Court of Appeals Fifth Circuit.

September 14, 1965.

Rehearing Denied October 20, 1965.

Andrew E. Carlsen, Minneapolis, Minn., Joseph H. Schley, Dallas, Tex., Douglas L. Carlsen, Minneapolis, Minn., for plaintiff-appellant, Schley & Schley, Dallas, Tex., of counsel.

Channing L. Richards, Charlotte, N. C., for appellees-appellants, Horace B. Houston, Jr., Dallas, Tex., of counsel.

Before TUTTLE, Chief Judge, and BROWN and GEWIN, Circuit Judges.

JOHN R. BROWN, Circuit Judge:

Now rounding out its first decade in this Court, this case, coming to us for the fourth time with two intervening trips to the 6th Circuit and one to the 8th¹ is a tribute to "the ant-like persistence of patent solicitors," Lyon v. Boh, S.D. N.Y., 1924, 1 F.2d 48, 50, and their courtroom advocate counterparts as so much grist is made out of one patent.²

Hopefully, this visit will achieve an end to this case, in this Court at least, although we fear that our decision is a prologue to another act since on a vital point of substantive patent law, we find ourselves in disagreement³ with our distinguished Brothers of the Eighth Circuit.⁴

The stage for this scene may be quickly set. In our 1963 decision (Op. 9) we modified and affirmed infringement damages but remanded the case for determination of F.R.Civ.P. 60(b) relief based on an asserted § 102(b) prior publication of the Road Show pamphlet-brochure allegedly describing the patented earth compactor. The District Court on the remand found 60(b) relief warranted thereby releasing Fifth Circuit Courts from the binding res judicata effect of the Ohio judgments (Op. 1, 4, 5 and 7). On the merits, it held, as did the 8th Circuit (Op. 8 and 6) that the publication disclosed the invention to invoke the absolute bar of § 102(b), 35 U.S.C.A. § 102(b). We uphold the Trial Judge as to 60(b) but reverse as to § 102(b) thereby reinstating the judgment upholding validity, infringment and the award of damages.

The 60(b) Relief

We sent the case back to determine whether the celebrated brochure (described in Op. 8 415) was in fact published at or before the July 1948 Chicago Road Show and, if so, whether circumstances of earlier non-disclosure or concealment of such fact satisfied requisite equitable consideration warranting 60(b) relief. The Patentee was implicated directly in this since its manager, Williamson (also a co-patentee), in the June 23, 1959 affidavit opposing reopening of the case by the Sixth Circuit, swore (Par. 7) positively that such brochure "was not prepared or distributed by Patentee until long after said roadshow."

Where in the 8th Circuit appeal the finding of 1948 publication was not attacked (Op. 8 415), the fact has now been irrefutably established as a fact. In the course of November 1963 pre-trial discovery for the 60(b) hearing then fixed for December 16, 1963, there was extensive inquiry both as to what had been discovered as to when the brochure had been published and, also, the nature and scope of the search. The evidence detailed the unsuccessful efforts conducted on a dual front under the direction of Williamson and the comptroller in 1959 in preparation of the Minnesota trial (Op. 6) where the § 102(b) issue was timely and directly raised for the first time. The upshot of that investigation was that no record, accounting or otherwise, could then be located showing the time of printing or even the identity of the printer. With our 1963 remand (Op. 9 601-602, 605, 609-611) again focusing attention on it, the top owner-management of Patentee, naturally alarmed at the increasing use of opprobrious descriptives charging conscious misconduct, renewed the efforts with vigor through the new comptroller, Moberg, who had since replaced his less competent predecessor. He uncovered in a loft two bundles of old discarded bookkeeping cash disbursement journals, one of 212 pages, the other of 552. Study of these revealed 36 references to printers or advertising agencies, including an item of $178.30 with the Gile Letter Service which was verified through checking of the Invoice Register. Although Patentee had done no business with Giles since 1952, Moberg, going to Giles' office, located a Kardex accounts receivable card which showed an entry "50 ton compactor" for the invoice payment of $178.30. It was now certain that the brochure had indeed been printed and distributed not later than July 1948. Patentee's counsel immediately notified Infringer's counsel of the fact which at every stage thereafter it formally and unequivocally acknowledged.

Out of the Patentee's records, the Williamson June 23, 1959 affidavit was therefore proved to be incorrect. It was untrue. But was it something more? Deliberate? Knowingly false? Although this record details other circumstances which raise questions why the fact was not earlier uncovered, we think the record as a whole, F.R.Civ.P. 52(a), does not warrant the Trial Judge characterizing this affidavit as a "false statement" and "manifestly untrue and knowingly so made." It may have been given too hastily as a response to the efforts to reopen the 6th Circuit decision (Op. 4) and perhaps too much reliance was put on the earlier escape clause in Par. 3 of the affidavit that "the following information * * * is true to the best of my knowledge and belief." But we do not think it shows a deliberate evil purpose to misstate or conceal or thereafter engage in foot-dragging lest the truth might be uncovered.

But this does not alter granting 60(b) relief. Because of the unique factors of this case and this type of public interest litigation which we previously discussed at length (Op. 9 609-611) 60(b) relief was justified, if not compelled. Stated with such positiveness, the affidavit, accompanied by strong memorandum briefs (see Op. 9 603-605) undoubtedly had a decisive impact on the 6th Circuit. The 6th Circuit's reliance on its literal truth closed the door there, and by res judicata here. The effect was the same whether there was evil, innocent or careless, purpose. In either event it was the action of the party taken while the case was still "alive" and when had the truth now revealed been disclosed quite a different result might have come about.

Expunging now the aspersions of purposeful misconduct, we are nonetheless certain that the broad reach of 60(b) reaches this far. The Judge was correct, therefore, in granting 60(b) relief to introduce belatedly, but permissibly, the new defense of § 102(b) prior publication.

§ 102(b) Prior Publication

In the Eighth Circuit case, Judge Nordbye held that the brochure sufficiently disclosed the invention (Op. 6) and applied the bar of § 102(b).⁵ The Eighth Circuit affirmed largely on the ground, as we read its opinion, that this was a question of fact (Op. 8 416) as generally identity is. See Bischoff v. Wethered, 1869, 19 Wall. 812, 814, 76 U.S. 812, 814, 19 L.Ed. 829; Southern Implement Mfg. Co., Inc. and George Partin v. McLemore, 5 Cir., 1965, 350 F.2d 244. While highly persuasive on principles of stare decisis, the Eighth Circuit's decision does not eliminate our judicial travail since we have the duty of reaching our own independent decision on the merits of the case as between these parties and on this record, Pierce v. Aeronautical Communications Equipment, Inc., 5 Cir., 1962, 307 F.2d 790, even though as it did there, this brings about diametrically opposed decisions on validity of the same patent against the same attack. And the Patentee urges, successfully it turns out, that there is a critical difference in this record in the form of expert opinion testimony with accompanying charts demonstrating element by element the deficiency in the brochure disclosure of the claimed invention.

One of the reasons there have been, and will be, differences is the inherent difficulty in the decisional process brought about largely by the unavoidable wordiness of controlling legal principles. In the final analysis, the rules support the result, seldom point the way to decision.

At this late date it is an affectation to pick out the threads which now make up this fabric by citation of case by case. If there is any disagreement in the statement of principles — not their application — we cannot discern it. Consequently, for our purposes we think it best to draw on the well recognized treatise⁶ for the synthesis of this accumulated wisdom.

One notices a principal, recurring theme with the differences being in verbal shadings, new figuratives. "A prior printed publication to defeat a patent must describe the invention in such full, clear and exact terms as to enable any person skilled in the art to which it relates to practice the invention." (277) "It must be in such full, clear and exact terms as to enable one skilled in the art to practice the patented improvement without the exercise of inventive skill of his own and without assistance from the patent claimed to have been anticipated." (278) In another phrasing to meet the test, the "prior description must disclose clearly, truly, and fully what the subsequent patentee invented and accomplished." (278) Another puts it, "Such description must exhibit a substantial representation of the patented invention." (277) In the words of the celebrated case,⁷ the revelation must be "in such full, clear and exact terms as to enable any person skilled in the art or science * * * to make, construct, and practice the invention to the same practical extent as they would be enabled if the information was derived from a prior patent." (286)

Of course, the ordinary skill in the art is not ignored. It is very much a part of the test. Nevertheless we must "read" the publication as we would a prior patent since the "same rules as...