Fromberg, Inc. v. Thornhill

• Decision Date: 21 March 1963
• Docket Number: No. 19764.,19764.
• Citation: 315 F.2d 407
• Parties: FROMBERG, INC., Appellant, v. Jack W. THORNHILL et al., Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

315 F.2d 407 (1963)

FROMBERG, INC., Appellant, v. Jack W. THORNHILL et al., Appellees.

No. 19764.

United States Court of Appeals Fifth Circuit.

March 21, 1963.

Peter A. Schley, Joseph H. Schley, Dallas, Tex., for appellant.

Cecil L. Wood, Dallas, Tex., for appellees.

Before HUTCHESON, BROWN and WISDOM, Circuit Judges.

JOHN R. BROWN, Circuit Judge.

This appeal by the Patentee of the Fromberg Patent of 1957¹ from an adverse judgment of the District Court presents questions of Defendant's liability for inducing others to infringe under 35 U.S.C.A. § 271(b)² and also for his own contributory infringement under § 271(c).

For reasons discussed at greater length, the District Court's findings do not really resolve the critical issues. All it found, in effect, was that Defendant did not infringe. While the findings are inadequate, we conclude that they are sufficiently definite to indicate that the Court was apparently laboring under misapprehension as to just what the critical issues were. Consequently, we cannot appraise many of them in the usual terms of the clearly erroneous concept of F.R. Civ.P. 52(b).³ At the same time it is not a case for a mere remand under directions to cure a procedural omission by directions to make findings.⁴

This particular procedural twist, the simplicity of this device, the clear-cut nature of the acts under scrutiny and the express acknowledgment that validity is not in question relieve us of an extended discussion of the patent. Perhaps even more fortunate, we need not attempt a paraphrasing of the patentese of the claims. Thermo King Corp. v. White's Trucking Service, Inc., 5 Cir., 1961, 292 F.2d 668, 675.

Fromberg discloses a simple device toward solving another one of the automotive age's problems — the repair of a puncture in the modern tubeless tire.⁵ The contribution — although hardly claimed to have been earth-shaking — is principally that the tire can be repaired without demounting the tire thus eliminating the risk of rim leaks. Recognizing the likelihood that Judges make poor patent draftsmen, we describe it loosely with like simplicity. In effect, the appliance is in two parts. One part is a hollow metal tube a couple of inches in length and, for varying repairs and tires, about one-quarter inch or so in diameter. The second part is a rubber cylindrical plug. This plug is inserted in the hollow tube for its whole length. This rubber insert is held firmly in place through compression. In its manufactured state, it is all in one piece — a solidly filled metal tube. In use it works this way. By a special tool,⁶ the assembly is inserted into the hole in the body of the tire. By manipulation of the special tool, the rubber plug insert is pushed out of the metal tube while the tube is being withdrawn from the tire. The result is twofold. First, the hole in the tire is now filled with the rubber plug which, being released from compression of the metal tube, has expanded considerably to afford a seal. Second, the metal tube is now empty. In that condition, it has no further use as a tire repair.

It is at this stage that the Defendant's activities are alleged to (a) induce infringement by others and (b) additionally constitute contributory infringement on his part. The device manufactured and sold by the Defendant is called "Miracle-Plug."⁷

The "Miracle-Plug" is a single piece of compressible rubber. Its main body is a cylinder approximately one-quarter inch in diameter and a couple of inches in length at which place it then tapers down to a one-eighth inch diameter tail about two to three inches in length. It is undisputed that by first inserting the tail into the empty Fromberg metal tube, the Miracle Plug can be forcibly drawn into the tube for its full length. When the surplus body and tail parts protruding beyond the end of the metal tube are cut (by simple pocket knife), the result is a device identical with the original Fromberg appliance.

It is also uncontradicted that Defendant (1) knew of this capability and (2) sold Miracle Plugs with knowledge that at least a substantial number were being used with empty, spent, Fromberg metal tubes.

In a nutshell his justification for this was not a feigned innocence that such uses were actually being made of his Miracle Plug. Rather, it was the bold and candid one that he had a legal right to do this. In the final analysis this came down to the contention that the Miracle Plug was "a staple article or commodity of commerce suitable for substantial noninfringing use," § 271(c).⁸

But as we pointed out earlier, the Court made no finding on this critical issue. As to the claim for contributory infringement, § 271 (c), we do not know what the District Judge concluded as to whether Defendant (a) sold Miracle Plugs for the purpose of being used in empty Fromberg tubes, (b) knew that this was the purpose for which they would actually (as distinguished from theoretically) be used, or (c) whether such plugs are actually suitable for substantial noninfringing use as a staple article.⁹ The Judge seemed to look at it as though the Defendant had merely found a cheaper, although perhaps not quite so efficient, way in which to repair a tubeless tire.

It is not for us initially to make these critical decisions. But in detailing the correct legal principles of contributory infringement to be considered on remand, we must discuss the facts. At least in one area we indicate rather strong impressions. It is in connection with the latter that we would point out that in the development of the defensive theory, the question of contributory infringement has been so magnified that it has obscured altogether that of inducing infringement by others. As to inducing infringement, § 271 (b), we conclude that the Patentee is entitled to a reversal.

Evaluation of the evidence as to that phase requires that we consider the conduct — and its legality — on the part of the Defendant's purchasers, the dealers. To be sure, they are not now parties. But their action bears on Defendant's culpability. Moreover, we are freshly reminded that for contributory infringement, there must first be a direct infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 1961, 365 U.S. 336, 341, 81 S.Ct. 599, 5 L.Ed.2d 592.

We think that this record shows irresistibly that the dealers are infringing the patent. Infringement arises if one without permission (a) makes, (b) uses, or (c) sells a patented device. 35 U.S.C.A. § 271 (a); and § 154. The dealer (tire service station) does that here. No one would question that if a dealer as an incipient Firestone and by his own ingenuity were to fill the empty Fromberg tube with compressible rubber, he is "making" a new appliance. Likewise, he would "use" it were it employed in repairing a tire in his shop. So far as the dealer is concerned, it does not matter what the source of the renewal rubber plug is. When the renewal process is complete, the thing is exactly the same as when sold by Fromberg.¹⁰

If, as would be the case here, the resulting product, that is the device, is the same as the patented one so that in appearance, form, fact and function, it is identical, it matters not how or in what manner that was brought about. 3 Walker, Patents § 453 (Deller ed. 1937). The person who does that surely infringes, if the term has any meaning at all. But civil culpability need not stop with the dealer who does the final act of making, using or selling. The prohibition of the law, now codified in § 271(b), extends to those who induce that infringement. Of course inducement has connotations of active steps knowingly taken — knowingly at least in the sense of purposeful, intentional, as distinguished from accidental or inadvertent. But with that qualifying approach, the term is as broad as the range of actions by which one in fact causes, or urges, or encourages, or aids another to infringe a patent.¹¹

On this phase the Defendant stands condemned by his own admissions and the overwhelming evidence from several witnesses, none of which so far reflects any helpful mitigation. Thus, in selling Miracle Plugs to several dealer-customers, the Defendant personally demonstrated how that Plug could be inserted in an empty Fromberg tube to recreate the original device which he knew to be patented. Without regard, then, to the separate question involved in the § 271 (c) contributory infringement phase whether this was a staple product capable of other uses, the sales pitch for the Miracle Plug was obvious: here is a way to salvage empty Fromberg tubes to enable the dealer to obtain for his stock (and use) a Fromberg device at considerable savings in out-of-pocket cost¹² and the elimination of the economic waste in a useless, spent, tube. This brings it home to Defendant in a spectacular way. From his own motive to profit by sales of Miracle Plugs, he shows his customers how to poach upon another's patent so that the illicit user may likewise profit.

Of course implicit in this discussion — Defendant's culpability based on direct infringement by the dealer — is the assumption that the dealer had no legal right to recreate the Fromberg device. In the light of contemporary developments, that may be a big assumption. What has been tentatively assumed must now be established. This turns on the problem so often epitomized in the verbal symbol "repair or reconstruction."

Where once the ultimate question seems to have been fractured into a series of subsidiary inquiries as to the length of life, cost, etc. of the replaced element of a combination patent in relation to other elements or the completed device as a whole, it has now been reduced to the simpler one: does this really make a new device? Aro Mfg. Co. v. Convertible Top Replacement Co., 1961, 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592. Of course it does not take long to recognize that such simplicity is beguiling, and in the process of a judicial determination a number of factors must...