Engel Industries, Inc. v. Lockformer Co.

• Decision Date: 18 March 1994
• Docket Number: No. 93-1418,93-1418
• Parties: NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. ENGEL INDUSTRIES, INC., Plaintiff-Appellant, v. THE LOCKFORMER COMPANY, IOWA Precision Industries, Inc. and Met-Coil Systems Corp. Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1105

22 F.3d 1105 NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

ENGEL INDUSTRIES, INC., Plaintiff-Appellant, v. THE LOCKFORMER COMPANY, IOWA Precision Industries, Inc. and Met-Coil Systems Corp. Defendants-Appellees.

No. 93-1418.

United States Court of Appeals, Federal Circuit.

March 18, 1994.

Rehearing Denied April 12, 1994.

Before NEWMAN, MICHEL and PLAGER, Circuit Judges.

MICHEL, Circuit Judge.

DECISION

Defendants-Appellees, The Lockformer Co., Iowa Precision Industries, Inc., and Met-Coil Systems Corp., have a patent on a specified configuration of a flange formed integrally at the ends of sheet metal duct sections. Defendants-appellees required plaintiff-appellant, Engel Industries, Inc., to accept a license as a condition for selling plaintiff-appellant's pre-existing roll forming machines, which would form integral flanges of a slightly different configuration. On this slightly different configuration, plaintiff-appellant had a patent application pending. When the patent was granted, plaintiff-appellant brought this suit seeking declaratory judgments not only that the patent license was invalid, but that:

(1) plaintiff-appellant's construction did not infringe the patent;

(2) the license agreement unlawfully based royalties on sales of staple items of commerce (roll forming machines and duct cornerpieces) over which defendants-appellees possessed market power; and

(3) defendants-appellees breached their contractual obligation to renegotiate with plaintiff-appellant for a lesser royalty, after the final judgment in another suit (brought by defendants-appellees against a third party) held that the scope of defendants-appellees' patent did not extend to plaintiff-appellant's cornerpieces.

The district court ruled in favor of plaintiff-appellant on the ground that the patent in suit was invalid because the specification did not disclose the best mode. Engel Indus., Inc. v. The Lockformer Co., slip op. 86-212-C, dated July 13, 1990. On appeal, this court reversed and remanded. Engel Indus., Inc. v. The Lockformer Co., 946 F.2d 1528, 20 USPQ2d 1300 (Fed.Cir.1991). On remand, plaintiff-appellant contended that, at the original trial, the district court had failed to make adequate findings of fact or conclusions of law on the above three issues. The district court, however, disagreed and issued an order which stated that its prior ruling "dispose[d] of all the issues before the [c]ourt and therefore no other final judgment [was] necessary." Engel Indus., Inc. v. The Lockformer Co., slip op. 86-0212-C, dated April 15, 1993, at 3-4. Plaintiff-appellant then filed a motion to alter or amend the judgment and for trial before a magistrate of these undetermined issues, which the district court denied. Plaintiff-appellant now appeals the district court's denial and urges this court to remand the above three issues to the district court. We vacate and remand.

DISCUSSION

Rule 52(a) of the Federal Rules of Civil Procedure provides, in relevant part, that "the court shall find the facts specially and state separately its conclusions of law thereon...." As to the consequences of a violation of Rule 52(a), in Custom Accessories v....