Cataphote Corporation v. De Soto Chemical Coatings, Inc.

• Decision Date: 08 February 1966
• Docket Number: No. 19827.,19827.
• Citation: 356 F.2d 24
• Parties: CATAPHOTE CORPORATION, a corporation, Appellant, v. DE SOTO CHEMICAL COATINGS, INC., a corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

356 F.2d 24 (1966)

CATAPHOTE CORPORATION, a corporation, Appellant, v. DE SOTO CHEMICAL COATINGS, INC., a corporation, Appellee.

No. 19827.

United States Court of Appeals Ninth Circuit.

February 8, 1966.

Charles J. Merriam, William A. Marshall, Alvin D. Shulman, Merriam, Marshall, Shapiro & Klose, Chicago, Ill., Allan R. Moltzen, Lerer, Moltzen & McAteer, San Francisco, Cal., for appellant.

Dugald S. McDougall, Chicago, Ill., Carl Hoppe, San Francisco, Cal., for appellee.

Before BARNES, HAMLIN and ELY, Circuit Judges.

BARNES, Circuit Judge:

This appeal arises from a district court judgment adverse to plaintiff-appellant, Cataphote Corporation, in a patent infringement suit instituted against defendant-appellee, De Soto Chemical Coatings, Incorporated.¹

The district court had jurisdiction pursuant to 28 U.S.C. § 1338. This court has jurisdiction pursuant to 28 U.S.C. § 1291.

The district court held appellant's patent claim invalid on the basis of the limitations imposed by 35 U.S.C. § 102(b). This section provides:

"A person shall be entitled to a patent unless —

* * * * * *

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *."

The district court concluded that appellant's patent ownership was invalid because "the invention" of that patent was "in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." The sole issue on this appeal is whether or not the district court erred in concluding that appellant's patent application was untimely.

The patent involved in this infringement proceeding purports to cover a thermoplastic pavement-marking composition, used principally for traffic lane markings on public thoroughfares. In September 1955, Cataphote had hired Arthur D. Little, Inc., to engage in research to develop a marking substance which might prove more durable than the paint which was customarily used for this purpose. John A. Poole, a Little employee, and the nominal patentee, developed the substance for which Cataphote was eventually granted a patent. It is the timeliness of the application for that patent that concerns us in this present controversy. Appellee's defense, sustained by the district court, contended that appellant's patent application of November 12, 1957 had been filed more than one year after the subject matter had been in public use and on sale in the United States, and, therefore, the patent was clearly void under the express terms of 35 U.S.C. § 102(b). The express purpose of this statutory provision was to prevent the extension of the monopoly period permitted by the patent laws by requiring an inventor to make timely application so that the patent period might commence to run without undue delay. The district court concluded that appellant's patent, if sustained, would result in a circumvention of both the terms and policy of section 102(b).

The disputed factual issue contested at trial and raised again on this appeal concerns whether or not the patent application of November 12, 1957 was filed more than one year after the product was placed in public use or on sale in this country; i. e., the factual issue before the district court was whether the thermoplastic was in public use or on sale prior to the critical date of November 12, 1956. The district court concluded that it was, rejecting appellant's contention that its activities with respect to the thermoplastic prior to the crucial date were merely experimental.

The determination of whether appellant's activities prior to the critical date were merely experimental or were of the kind set out in section 102(b) is a matter left for the consideration of the trier of fact. The resolution of this question depends principally upon a careful examination of each item of evidence and an evaluation thereof to judge the nature and purpose of the course of conduct of the purported patent holder. We cannot accept appellant's characterization of this problem as one involving a matter of law, and, therefore, one free of the limitations imposed on an appellate court when reviewing the factual determinations of the court below. The resolution of the sole issue raised regarding section 102(b) depends entirely on a determination, from the totality of evidence presented by both parties, of the nature of the acts committed prior to the critical date and the purpose that motivated the commission of those acts. To the extent that issues can be accurately characterized as solely questions of law or fact, the crucial issue involved in this controversy is an issue of fact.

Appellant, though reluctant to characterize the issue involved as one of fact, does nevertheless ground its argument on a purported demonstration of the "clearly erroneous" nature of the district court's findings. In so doing, however, appellant disregards the severe limitations imposed on an appellate court in reviewing findings of fact. It is not our function to reevaluate the evidence presented below. We cannot substitute our judgment for the first-hand evaluation made by the trier of fact. Pursuant to Rule 52(a) of the Federal Rules of Civil Procedure our obligation is to determine if the findings below were "clearly erroneous." This statutorily imposed standard does not vest us with power to reweigh the evidence presented at trial in an attempt to assess which items should and which should not have been accorded credibility. Our task, rather, is to determine if there exists evidence of substance to support the findings of fact of the trial court. Thus, it does not aid appellant's position on review to merely extract that evidence presented which supports its position; rather it must additionally demonstrate that no substantial evidence was presented which supports the district...