Custom Paper Products Co. v. Atlantic Paper Box Co., 72-1165

• Decision Date: 09 November 1972
• Docket Number: 72-1171.,No. 72-1165,72-1165
• Citation: 469 F.2d 178
• Parties: CUSTOM PAPER PRODUCTS CO. et al., Plaintiffs, Appellants, v. ATLANTIC PAPER BOX CO., Defendant, Appellee. CUSTOM PAPER PRODUCTS CO. et al., Plaintiffs, Appellees, v. ATLANTIC PAPER BOX CO., Defendant, Appellant.
• Court: U.S. Court of Appeals — First Circuit

469 F.2d 178 (1972)

CUSTOM PAPER PRODUCTS CO. et al., Plaintiffs, Appellants, v. ATLANTIC PAPER BOX CO., Defendant, Appellee.

CUSTOM PAPER PRODUCTS CO. et al., Plaintiffs, Appellees, v. ATLANTIC PAPER BOX CO., Defendant, Appellant.

Nos. 72-1165, 72-1171.

United States Court of Appeals, First Circuit.

Heard October 4, 1972.

Decided November 9, 1972.

Francis A. Utecht, Long Beach, Cal., with whom Dike, Bronstein, Roberts & Cushman, Robert F. O'Connell, Boston, Mass., and Fulwider, Patton, Rieber, Lee & Utecht, Long Beach, Cal., were on brief, for Custom Paper Products Co., and others.

Gerald Altman, Boston, Mass., with whom Herbert L. Bello and Morse, Altman & Oates, Boston, Mass., were on brief, for Atlantic Paper Box Co.

Before ALDRICH, McENTEE and CAMPBELL, Circuit Judges.

ALDRICH, Senior Circuit Judge.

These appeals raise the issues of validity and infringement of claim 3 of Hincher Patent No. 2,841,056. The patent claims a machine which flares one edge of a cardboard strip that is to be used as the vertical component, or side, of a box—notably an inexpensive heart-shaped candy box—whose design makes stability difficult. Flaring what is to be the lower edge increases the surface area of contact, allowing the strip to be more securely glued to the base. The patentee does not claim to have invented the concept of a flared edge, or the process of box manufacture, but merely the flaring machine. In this suit Custom Paper Products Company and Hincher, hereafter Hincher, charged that Atlantic Paper Box Company, hereafter Atlantic, had been using a machine that infringed on his invention. Atlantic denied infringement, and asked for a declaration of invalidity.

Two parallel pressure rollers feed the cardboard strip through the Hincher machine. Immediately after the strip passes the rollers, a fixed transverse depressing member exerts a "crushing force" against one edge. The strip is backed up, or "buttressed," by a guide at the opposite edge, so that the edge subjected to the pressure having, so to speak, no place to go, flares out in both directions. In claims 1 and 2 the depressing member is described as a chisel. Claim 3, however, speaks broadly of "edge crushing means." In Atlantic's machine the cardboard strip is projected from endless belts, clearly the equivalent of rollers, and guided so that one edge comes in contact with a rapidly rotating, multitooth cutter wheel, normally used for slotting. The teeth, or cutting surfaces of the wheel, are positioned at cross angles to the strip. Atlantic contended that this wheel was not within the patent. The district court, 340 F.Supp. 897, found otherwise, and that, if valid, Hincher was infringed. However, it held the patent invalid. Both sides appeal.

Before proceeding to the merits we dispose of a procedural issue raised by Hincher. Because the evidence was all documentary and by depositions and affidavits, he urges us to review the evidence de novo and make our own findings. Some courts have taken this approach. See Nasco Inc. v. Vision-Wrap, Inc., 7 Cir., 1965, 352 F.2d 905, 908; Orvis v. Higgins, 2 Cir., 1950, 180 F.2d 537, 539, cert. denied 340 U.S. 810, 71 S.Ct. 37, 95 L.Ed. 595. Others, while shrinking from a de novo hearing on appeal, have suggested that in this situation something less than the "clearly erroneous" standard of review, F.R.Civ.P. 52(a), is appropriate. See, e. g., Caradelis v. Refineria Panama, 5 Cir., 1967, 384 F.2d 589, 593-594. We have not taken either view. See Texas Co. v. R. O'Brien & Co., 1 Cir., 1957, 242 F.2d 526, 529; Leach v. Crucible Center Co., 1 Cir., 1968, 388 F.2d 176, 179, and do not propose to. While in some instances the fact that the district court saw live witnesses may reinforce its conclusions in the area of credibility, cf. United States v. Oregon State Medical Society, 1952, 343 U.S. 326, 331-332, 72 S.Ct. 690, 96 L.Ed. 978, the basic principle remains the same: if the district court's findings, considering the record as a whole, whether based on live or other types of evidence are reasonably supported, they must stand. Our appellate function does not differ just because the parties expedited the trial by obviating the need of live witnesses. Accord: H. K. Porter v. Goodyear Tire & Rubber Co., 6 Cir., 1971, 437 F.2d 244, 246, cert. denied 404 U.S. 885, 92 S.Ct. 203, 30 L.Ed.2d 169; Worthen Bank & Trust Co. v. Franklin Life Ins. Co., 8 Cir., 1966, 370 F.2d 97, 99-100; Lundgren v. Freeman, 9 Cir., 1962, 307 F.2d 104, 113-114. See generally, C. A. Wright, Federal Practice (2d ed., 1970), p. 431.

Since on initial examination we thought there was no infringement, and that this would be a speedy disposition, we deal first with that issue. We thought there was no infringement for the same reasons, we suspect, that led the examiner to believe originally there was no invention over Claff, Patent No. 2,682,909. Claff, like Atlantic, used a cutting wheel to apply force to the edge of cardboard material. Atlantic contended that since it was only after Hincher distinguished his invention from Claff's that his patent was allowed, he may not now charge that a similar "cutting" machine falls within his claim. The fallacy, however, as Hincher ultimately made clear to the examiner, is that Claff, by using a disc wheel, applied the force parallel to the plane...