CS Johnson Company v. Stromberg

• Decision Date: 08 May 1957
• Docket Number: No. 15249.,15249.
• Citation: 242 F.2d 793
• Parties: C. S. JOHNSON COMPANY, a Corporation, Appellant, v. Merle W. STROMBERG, Doing Business as California Batching Equipment Co., Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

242 F.2d 793 (1957)

C. S. JOHNSON COMPANY, a Corporation, Appellant, v. Merle W. STROMBERG, Doing Business as California Batching Equipment Co., Appellee.

No. 15249.

United States Court of Appeals Ninth Circuit.

March 29, 1957.

Rehearing Denied May 8, 1957.

Richard L. Gausewitz, Santa Ana, Cal., and William A. Denny, Milwaukee, Wis., for appellant.

Lyon & Lyon, R. Douglas Lyon, Los Angeles, Cal., for appellee.

Before STEPHENS, CHAMBERS and BARNES, Circuit Judges.

BARNES, Circuit Judge.

This is a suit for infringement of United States Letters Patent No. 2,138,172, for a concrete Batching Apparatus invented by plaintiff's assignors. The patent issued November 29, 1938, expired November 29, 1955. (The filing date was February 10, 1937.) Suit was instituted August 25, 1954. By the time trial was had, the prayer for injunctive relief was moot.

The invention may be succinctly described as a combination patent, whereby a cement hopper is centrally located within an aggregate (sand and rock) hopper, each hopper being independently supported so that their contents can be separately weighed, with the respective hopper discharge gates being so concentrically located that the cement is discharged simultaneously (or nearly so) with the aggregate, by gravity, through the center of the "flowing shaft of aggregate," while water is supplied to the aggregate by a tubular stream surrounding the aggregate. The simultaneous fall causes a certain amount of "commingling," prior to the batch reaching the pre-mix truck or mixer. If no water is added, a dry batch is, to a certain extent, "commingled."

By such a procedure, various advantages are claimed: (1) a reduction in the amount of cement lost through "dusting;" (2) the reduction of "balling" and "gumming" by preventing the cement from hitting the mixer sides or mixer blades before the aggregate does; (3) a speeding up of the final and necessary "pre-mixing," or "mixing;" (4) a pre-shrinking of the size of the total of ingredients prior to transportation to the job site; and (5) some reduction of batching plant size and height, with resultant cost of construction saving.

By stipulation Tr. 29, 151, the trial proceeded only as to claims 1 and 5 of the patent. As appellant says:

"Claim 1,¹ shown in plaintiff's Exhibit 15, is a broad claim which covers * * * all the accused plants. * * *" "Claim 5,² shown in plaintiff's Exhibit 17, is a much more specific claim which covers * * *" but two plants.

"From the above it will be understood that Claim 1 must be held valid and infringed if plaintiff is to be given substantial relief. The upholding of Claim 5, although also much desired by plaintiff, will result in greatly diminished relief since Claim 5 covers two plants only."

Claims 1 and 5 were held invalid by the trial court, solely on the ground of an alleged prior public use at a batching plant constructed and operated by strangers to the present action at 235 Alabama Street, San Francisco, California. Findings of Fact and Conclusions of Law, Tr. pp. 78-84

It is obvious from a reading of the Transcript that the defendant discovered at the last minute the prior use relied upon at the trial. Counsel for defendant at the conclusion of the direct testimony of plaintiff's first witness, on March 13, 1956, (a Tuesday) advised the court and opposing counsel that on the preceding day, Monday, he had received for the first time drawings of an alleged prior use; and that his client, the defendant, had heard about such prior use "the middle of last week," Tr. 157 and defense counsel learned of it "last Thursday or Friday, Friday afternoon." (March 9th, 1956.) Tr. 160

While the defendant's answer had raised a claimed lack of invention in plaintiff's patent, and a sale in this country "more than two years prior to the date of the application for the patent in suit," the pretrial memoranda filed by counsel for defendant on March 7, 1956, did not mention the specific prior use introduced and primarily relied upon, at the trial.

It should be noted here that the plaintiff had filed its pretrial memorandum on July 20, 1955. It had urged and insisted on trial as soon as possible. Defendant, (whether through fault or otherwise) had caused and apparently welcomed delay, and had substituted new defense counsel at a late date, after the first counsel for the defendant had requested that he be substituted out. New defense counsel filed a motion to continue the trial which was denied. Due to congested court calendars, there was delay before trial of the action could be reached.

Plaintiff urges this Court to reverse the lower court's findings and judgment because:

"Point I. The trial court erred in finding the evidence on the apparatus at 235 Alabama Street, San Francisco, California, to be such, as a matter of law, as to invalidate claims 1 and 5 of Johnson patent No. 2,138,172.

"Point II. The trial court abused its discretion by admitting evidence relative to the Alabama Street plant despite failure by defendant to comply with 35 U.S.C. 282.

"Point III. The documentary evidence relative to the Alabama Street plant is hearsay, and was not properly admitted under 28 U.S.C. 1732 (a)." Appellant\'s Open. Brief, pp. ii, iii.,

and further urges Point IV, that the defendant's infringement is clear, and therefore, Point V, there is no necessity of a remand.

Because we cannot agree with appellant's first three points, and hence affirm the lower court, we need not deal with Points IV and V. We will discuss the first three points in turn.

"Point I. The trial court erred in finding the evidence on the apparatus at 235 Alabama Street, San Francisco, California, to be such, as a matter of law, as to invalidate claims 1 and 5 of Johnson patent No. 2,138,172."

Here the trial court, (if we assume the evidence of prior use was properly before it) had the testimony of three witnesses to rely on: Murasko, Cornett, and Bodinson, together with many written Exhibits. Certainly the individuals gave testimony, which, if believed by the trier of fact, was sufficient to justify the finding of prior use here questioned.³

A careful review of the entire record leaves no doubt in our minds but that a certain batching plant existed on Alabama Street in San Francisco as early as 1931, and perhaps 1930. There were many details given by the witnesses above named, (such as jobs supplied with concrete mix from this plant, giving names and locations, and the years supplied). It is true that the existence of "a batching plant" in 1931 or 1932 does not prove the existence of a plant similar to plaintiff's claimed invention, nor one which demonstrated a prior use of the patented art. But this preliminary deficiency was amply made up through the detailed and knowledgeable testimony of Murasko. He testified he was present when the batching machinery was installed and helped install it. He operated it from 1931 until the last day of May, 1942. He had been in charge of a somewhat similarly constructed batching plant at another (Geneva Avenue) address, and came to the Alabama Street plant when the wooden frame had been built, before any hoppers or scales had been added. He described the hoppers in detail, and knew who made them. He described the separate scales, and knew who manufactured them, and what company had installed them. The cement hopper was located "dead center" above the aggregate discharge. No cement could reach the truck or stationary mixer unless and until the aggregate discharge was also opened.

Murasko had seen the same general type of construction at the "Geneva Avenue and Tara Street plant" of the Bode Ready-Mix Concrete Company in 1930. (There the cement hopper had been within the aggregate hopper, but off to one side, not directly above the aggregate discharge opening.)

Cornett had worked under Murasko at the same plant from 1933 or 1934 to 1942, and was in charge of that same plant himself from 1942 to 1945. His sole job was to operate the plant; he gave ample evidence under cross-examination that he had done so, and was completely familiar with the manner in which it was constructed and, more particularly, operated.

The witness Bodinson, President of the company (since 1940) that built the Alabama Street plant in 1931, first saw the plant erected, when during his high school days, he had worked on Saturdays and vacations. This he had done continuously from 1928 or 1929 on. He later worked full time until 1940, when he succeeded his father as president. He had first visited the plant on a Saturday in the fall of 1931.

Mr. Bodinson identified drawings taken from his company's files, which were customarily kept therein. He described how these records were consecutively lettered and numbered, and how filed. Defendant's Exhibit A, for example, was identified as a drawing "made in our company December 4, 1931 by Mr. Pete Hansen, his initials are P. H. and his signature (sic) I recognize." The same system was followed by this company in keeping records after Mr. Bodinson went with his father's company as before, except that drawings are now microfilmed for added protection. Mr. Bodinson actually saw a drawing of the Alabama plant while it was in the course of being constructed, although he frankly admitted he was too young, and had no reason, to study it, or advise anyone concerning it.

Bodinson was a mechanical engineer, registered as such by the State of California, and could read and prepare engineering drawings and blueprints. He identified drawings of the slide gates on the cement hopper, (Defendant's Exhibit F); of the bottom of the storage bins, (Defendant's Exhibit G); of the cement weigh hopper and rotary feeder, (Defendant's Exhibit H); of the independently hung cement hopper within the aggregate hopper, (Defendant's Exhibit I); of the feeder drive and cement scales, (Defendant's Exhibit J). All these related to the alleged prior use; and were purportedly prepared just prior to the time the...