Fromberg, Inc. v. Gross Manufacturing Company

• Decision Date: 26 February 1964
• Docket Number: No. 18539.,18539.
• Citation: 328 F.2d 803
• Parties: FROMBERG, INC., Appellant, v. GROSS MANUFACTURING COMPANY, Inc., Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

328 F.2d 803 (1964)

FROMBERG, INC., Appellant, v. GROSS MANUFACTURING COMPANY, Inc., Appellee.

No. 18539.

United States Court of Appeals Ninth Circuit.

February 26, 1964.

Nilsson, Robbins & Anderson, and B. G. Nilsson, Los Angeles, Cal., for appellant.

Christie, Parker & Hale, C. Russell Hale, and Harold L. Jackson, Pasadena, Cal., for appellee.

Before HAMLIN, BROWNING and DUNIWAY, Circuit Judges.

DUNIWAY, Circuit Judge.

Appellant is the owner of United States Letters Patent No. 2,828,791 and brought this action charging infringement of the patent. The trial court granted the appellee's motion for summary judgment. We are affirming.

The patent is a combination patent involving two unpatentable elements. The combination is a simple, clever, useful, and highly successful device, the purpose of which is to enable a tire repairman to repair a hole in a tubeless automobile tire without removing the tire from the rim. The first of the two unpatentable elements which form the combination is an elongated metal tube of small diameter, sharpened at one end so that it can be forced through the tire and having a flared opening at the other end for the purpose of facilitating insertion into the tube of an elongated rubber plug which is compressed when inside the tube. The plug is the other element. The patented combination is used in connection with an "applicator" on which appellant also holds a patent No. 2,828,657. The applicator is used to hold the flared end of the tube containing the rubber plug while the tube is being forced through the tire and then simultaneously to eject the rubber plug from the tube and withdraw the tube from the tire so that the plug remains in the hole. As the inventor stated in the patent in suit: "The object of this invention is, therefore, to provide means for installing a stem of resilient material in an opening through a motor vehicle tire."

The appellee manufactures rubber plugs of a size and shape suitable to be inserted in the metal tubes which are one of the two elements in the Fromberg combination. Appellee's plugs are specifically designed for this use. In marketing them, appellee purchases one of appellant's patented combinations of tube and plug, and places it, together with a supply of appellee's rubber plugs and a "cartridge holder" produced by appellee, in a cardboard package. It then sells the package as a kit labeled "Rubber Rivet Reloads for use with Fromberg Cartridges." It plainly shows that the enclosed Fromberg cartridge is appellant's and that the other items are appellee's, and there is no claim that appellee is deceiving purchasers as to the source of the plugs sold by appellee. The kit contains an instruction sheet that shows the buyer how, with the use of the cartridge holder, he can insert appellee's rubber plug in the empty Fromberg tube, thus enabling him to reuse the tube. Appellee does not manufacture or sell tubes; it uses and sells only appellant's tubes. Appellant, on the other hand, does not separately market its tubes or plugs, but sells only the combination.

The validity of appellant's patent is admitted by appellee on this appeal, although it was attacked in its answer. We assume, but do not decide, that the patent is valid.

The facts that we have stated appear in affidavits submitted by appellee. These affidavits were accompanied by a copy of the patent in suit and of its "file wrapper" and by physical exhibits consisting of appellant's cartridges in four different sizes, each containing one of appellant's rubber plugs, samples of appellee's rubber plugs, of its cartridge holder, and of the carton in which its kits are sold, and a sample package put out by appellant and containing 25 of its cartridges. Also attached to one of appellee's affidavits is a copy of an advertisement published by appellee in which it advertises its rubber plugs as reloads for Fromberg's cartridges and shows by means of illustrations how to reload them. In that affidavit, which was made by appellee's president, it is stated: "Each of the Fromberg cartridge shells (Exs. A, B, C and D) are capable of inserting many of the expendable rubber plugs into tires."

In response, appellant filed an affidavit by one of its counsel in which it is stated that the Fromberg plug "requires the use of an applicator for placement in a tire and is not self-dispensing." A copy of the patent No. 2,828,657 covering the applicator is attached to this affidavit. There is also an affidavit of the executive vice president of appellant in which it is stated:

"3. That in the use of a Fromberg rivet, the rubber stem is placed in a tire puncture by a repair gun, and the metal-shell part of the rivet does not, and cannot dispense the stem into a tire.

"4. That spent shells from Fromberg rivets have no practical value, because the shells can be manufactured for less cost than they can be reclaimed.

"5. That the shell portion of a Fromberg rivet is designed for a single use and to reclaim such shells and refill them for reliable operation is not economically feasible."

Appellant states the truism that it is improper to grant a motion for summary judgment under Rule 56, F.R.Civ.Proc. unless the affidavits and other evidence produced on the motion "show that there is no genuine issue as to any material fact." (Rule 56(c)). It asserts that the affidavit last quoted raises such genuine issue. We think not. There is no contention by appellee that appellant's loaded cartridge can be used without the applicator. Appellant's affidavit does not contradict appellee's statement that appellant's cartridges are capable of reuse. It merely asserts that such reuse is not economically feasible, and that they can be manufactured for less cost than they can be reclaimed. If this be true, and we assume for the purpose of this appeal that it is, then appellee is not likely to stay in business very long because purchasers of the Fromberg cartridge will discover that it does not pay to reload them with appellee's plugs. However, for reasons hereafter stated, we think that the economic feasibility of reloading the cartridges is immaterial, and that there is therefore no "genuine issue as to any material fact" in this case.

It is well settled that in certain cases a motion for summary judgment is a proper way in which to dispose of an action for patent infringement. See Park-In-Theatres, Inc. v. Perkins, 9 Cir., 1951, 190 F.2d 137; Steigleder v. Eberhard Faber Pencil Co., 1 Cir., 1949, 176 F.2d 604; Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 2 Cir., 1956, 233 F.2d 9.

Appellant, however, says that the court made no express finding that there was no genuine issue as to any material fact and invokes the "technical rule" that absent such a finding the judgment must be reversed. Apparently, the notion that there is such a technical rule started with an impatient statement of Judge Fee, citing no authority, in New and Used Auto Sales v. Hansen, 9 Cir., 1957, 245 F.2d 951, a case in which this court found that there were genuine issues to be tried. There is similar, but somewhat weaker, language by Judge Mathews in Sequoia Union High School Dist. v. United States, 9 Cir., 1957, 245 F.2d 227. These dicta were repeated in the form of an alternative holding in Neff Instruments Corp. v. Cohu Electronics, Inc., 9 Cir., 1959, 269 F.2d 668, 674. Yet in each case the court was at pains to show that there were, in fact, genuine issues of material fact to be tried. How much repetition of dicta is required to make a holding, we need not here decide.

The court is not required to make any finding in granting a motion for summary judgment. Lindsey v. Leavy, 9 Cir., 1945, 149 F.2d 899, 902. Such findings, however, are sometimes made, and when made they are helpful to the appellate court. In this case the court wrote an opinion and also made formal findings of fact and conclusions of law. The latter do not contain the ritual statement that there is no genuine issue as to any material fact. The opinion states: "Defendant appellee urges that all the facts hereinabove stated are undisputed and that they establish non-infringement. With this conclusion we agree." We think that, unless litigation is to be reduced to mere verbal ritualism, a prospect that we do not regard with any relish, this statement is equivalent to a statement that there is no genuine issue as to any material fact.

Appellant asserts that what appellee does is both direct and contributory infringement. These are defined in 35 U.S.C. § 271 as follows:

"(a) Except as otherwise provided in this title, whoever without authority makes, uses or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent.

"(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

"(c) Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."

The validity of appellant's assertion depends upon whether what appellee does is a direct infringement. "In a word, if there is no infringement of a patent, there can be no contributory infringer." (Mercoid Corp. v. Mid-Continent Co., 1944, 320 U.S. 661, 677, 64 S.Ct. 268, 276, 88 L.Ed. 376 (concurring opinion), quoted and followed in Aro Mfg. Co. v. Convertible Top Replacement Co., 1961, 365 U.S. 336, 341, 81 S.Ct. 599, 5 L.Ed.2d 592). The Aro decision holds that § 271(c) does not change this rule, becoming operative, by its own terms, only where the article involved is for use in an infringement of the patent. Is there direct infringement? We think not.

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