Canadian Ingersoll-Rand Co. v. Peterson Products, 19266.

• Decision Date: 10 August 1965
• Docket Number: No. 19266.,19266.
• Citation: 350 F.2d 18
• Parties: CANADIAN INGERSOLL-RAND COMPANY, Ltd., Rand Development Corporation and Ingersoll-Rand World Trade Limited, Appellants, v. PETERSON PRODUCTS OF SAN MATEO, INC., a corporation also known as Peterson Spray Gun Co., Inc., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

350 F.2d 18 (1965)

CANADIAN INGERSOLL-RAND COMPANY, Ltd., Rand Development Corporation and Ingersoll-Rand World Trade Limited, Appellants, v. PETERSON PRODUCTS OF SAN MATEO, INC., a corporation also known as Peterson Spray Gun Co., Inc., a corporation, Appellee.

No. 19266.

United States Court of Appeals Ninth Circuit.

June 29, 1965.

Rehearing Denied August 10, 1965.

C. Blake Townsend, Robert E. Kosinski, Carroll G. Harper, Byerly, Townsend, Watson & Churchill, New York City, for appellants.

Charles E. Townsend, Anthony B. Diepenbrock, Stephen S. Townsend, Townsend

& Townsend, San Francisco, Cal., for appellee.

Before MADDEN, Judge of the Court of Claims, and HAMLEY and BROWNING, Circuit Judges.

HAMLEY, Circuit Judge.

In this patent infringement suit the district court entered judgment for defendant, determining that the two patents sued upon are invalid and, in any event, not infringed. The opinion of the district court leading to entry of this judgment is reported in 223 F.Supp. 803.

Plaintiffs appealed from that judgment. They thereafter moved in the district court, under Rule 60(b), Federal Rules of Civil Procedure, for a new trial on the ground of newly-discovered evidence pertaining to the asserted prior art patent of Richard C. Bradley (United States Patent No. 3,123,307). At the same time plaintiffs moved in the district court for an order indicating that it would entertain the motion for a new trial, if this court shall remand the case for that purpose. The latter motion was denied upon initial consideration, and again upon rehearing, and plaintiffs appealed from both of those orders.

These three consolidated appeals are now before us.¹ The patents in suit are also involved in litigation elsewhere. On May 24, 1963, the United States District Court, Southern District of Florida, Miami Division, held the patents to be valid and infringed. Ibis Enterprises, Ltd. v. Spray-Bilt, Inc., 220 F.Supp. 65, now pending on appeal in the Fifth Circuit. A similar suit in Arkansas has not yet been tried, according to the latest advice received by this court.

One of the patents here sued upon is No. 2,933,125 — "Method Of And Portable Apparatus For Depositing Reinforced Plastic" (main or '125 patent). David F. Anderson, the asserted inventor, applied for that patent on August 6, 1953, the date of the claimed invention being July, 1952. The patent was not issued until April 19, 1960. It contains six claims all relating to the method of forming reinforced plastic articles by cutting fibers, spraying the cut fibers with an atomized plastic in a fluid state and depositing the fibers on a mold to form a fiber reinforced plastic article, and to a hand-held machine for carrying out the method.

The other patent sued upon is No. 2,787,314 — "Apparatus And Method For Forming A Fiber Reinforced Plastic Article" (improvement or '314 patent). Anderson applied for it on October 13, 1954. It was issued on April 2, 1957, which was three years prior to issuance of the main patent. The improvement patent, containing thirteen claims, is for specific improvements upon the apparatus and method of the main patent.

Anderson assigned the patent applications to Ingersoll-Rand Company, Ltd. (Ingersoll-Rand), which thereby became the owner of both patents when issued. That company, in turn, entered into an agreement with Rand Development Corporation (Development), under which the latter became, and still is, exclusive licensee under both patents.

On February 24, 1959, Ingersoll-Rand and Development instituted this action against Peterson Products of San Mateo, Inc., also known as Peterson Spray Gun Co., Inc. (Peterson Products) charging infringement of the improvement patent, the main patent having not yet been issued. Since September, 1958, Peterson Products has been manufacturing, using and selling both a resin spray gun and a fiberglass cutter. When these devices were used conjointly by Peterson Products, or by its customers according to the written instructions of Peterson Products, to manufacture fiberglass reinforced plastics, the combined devices constituted the accused apparatus and their use the accused method.

Following the issuance of the main patent Ingersoll-Rand assigned all of its interest in the two patents to Ibis Enterprises, Ltd. This company later became Ingersoll-Rand World Trade Ltd. (World Trade), by which name it will be referred to herein. On August 18, 1961, Ingersoll-Rand, Development and World Trade, filed a supplemental complaint against Peterson Products, bringing in issue the infringement of the main patent as well as the improvement patent.²

In its answer to the supplemental complaint, Peterson Products denied infringement and advanced several affirmative defenses. Among the defenses asserted were that both of the patents sued upon are invalid for a variety of reasons, and that plaintiffs are guilty of unclean hands and misuse of patent rights.³ Defendant counterclaimed for a judgment declaring the patents are invalid, unenforceable because of misuse of patent rights and, in any event, not infringed. The trial consumed thirty-one full trial days, including three days of opening statements and about three days of closing arguments.⁴

The district court held both patents invalid for several reasons, as summarized in the margin.⁵ In order to obtain a reversal, appellants must convince us that the trial court erred as to each and every ground relied upon by that court in holding the patents invalid and, in addition, that the trial court erred in holding that the patents have not been infringed.

In our opinion the trial court did not err in finding and concluding that, for each of the first four reasons stated in note 5, the main patent is invalid. Likewise, the trial court did not err in finding and concluding that, for the reasons set out in the last sentence of note 5, claim 11 of the improvement patent is invalid. As stated in note 2, above, this is the only claim of the improvement patent which was assertedly infringed.

As our basis for these determinations we adopt the discussion of these points in the thorough and scholarly opinion of the trial court, reported at 223 F.Supp. 803, with such modifications of that opinion as were effectuated by the subsequently entered findings of fact and conclusions of law. Our study of the record and briefs convinces us that the trial court opinion, as so modified, correctly analyzes and resolves the issues pertaining to these particular grounds of invalidity, and that the findings of fact upon which these legal conclusions are predicated are not clearly erroneous.

Perhaps this would be enough to say in support of the trial court findings and conclusions in question. However, we think it appropriate to discuss at some length what may perhaps be the primary ground on which the main patent was held to be invalid, indicating why we are in agreement with the trial court. We refer to the second reason set out in note 5, to the effect that the subject matter as a whole as set forth in the claims would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. The statutory basis for this ground, as cited by the trial court, is 35 U.S.C. § 103 (1958).⁶

Appellants challenge the findings of fact and legal conclusions upon which this ground of patent invalidity is based.

The general subject matter of the main patent is a method of making reinforced plastic articles utilizing polyester resins and fiberglass, and an apparatus for performing it. The resins used in all methods employed in making reinforced plastic articles consist of resin-catalyst mixtures and resin-accelerator (promoter) mixtures which, when combined together harden within a short time into a hard plastic structural material. In all such methods fiberglass is used with these resins for purposes of reinforcement. Fiberglass was first made available for this purpose in the form of woven glass cloth or a chopped fiberglass matting.

The manufacture of reinforced plastic articles, such as small pleasure boats, was initially accomplished by either the "hand lay-up method" or the pre-form (matched metal die) method. The hand lay-up method consists in hand tailoring the glass fiber matting or cloth, or layers of both, fitting and draping the cut pieces to lay on or around the mold. The cloth and mat layers are then brushed or sprayed with a mixture of catalyzed and accelerated resin so that the fiberglass reinforced resins will harden to form a structural article or part which is subsequently removed from the mold.

The pre-form method consists in the use of pre-form equipment which includes a rotary cutter to chop or cut fiberglass rope or roving into small lengths which is then blown against a perforated mold. Simultaneously there is sprayed onto the chopped glass fibers a bonding resin. This molded pre-form of chopped bonded fibers is then placed between matched metal dies where additional bonding resin is poured onto the fibers to fully impregnate then. The dies are then closed and subjected to heat and pressure to compact and densify the fibers and to cause the bonding resin to quickly come into a hardened condition.

The method contemplated by the main patent is the simultaneous spraying of reinforcing fibers in conjunction with a liquid adhesive binder, whereby the liquid binder and fibers are deposited on a mold or other surface to build up a laminate or coating of reinforced plastic material of desired thickness. The apparatus for utilizing this method, as disclosed in the main patent, comprises essentially two component parts: (1) a pair of spray guns for simultaneous spraying usually a catalyzed resin through one gun and a promoter resin through a second gun for convergence at a point in the air in front of and close to the surface to be covered, and (2) a rotary cutter or chopper for cutting fiber roving into short...