Himmel Bros. Co. v. Serrick Corporation

• Decision Date: 03 September 1941
• Docket Number: No. 7518.,7518.
• Citation: 122 F.2d 740
• Parties: HIMMEL BROS. CO. v. SERRICK CORPORATION.
• Court: U.S. Court of Appeals — Seventh Circuit

122 F.2d 740 (1941)

HIMMEL BROS. CO. v. SERRICK CORPORATION.

No. 7518.

Circuit Court of Appeals, Seventh Circuit.

September 3, 1941.

George I. Haight and M. K. Hobbs, both of Chicago, Ill., and Arthur M. Hood, W. P. Hahn, and Harold B. Hood, all of Indianapolis, Ind., and Edward A. Haight, of Chicago, Ill., for appellant.

H. A. Toulmin, H. A. Toulmin, Jr., and Rowan A. Greer, all of Dayton, Ohio, and Patrick J. Smith, of Indianapolis, Ind. (Thompson, O'Neal & Smith, of Indianapolis, Ind., and Toulmin & Toulmin, of Dayton, Ohio, of counsel), for plaintiff-appellee.

Before MAJOR and KERNER, Circuit Judges, and LINDLEY, District Judge.

MAJOR, Circuit Judge.

This is an appeal from a decree entered October 11, 1940, adjudging plaintiff's Patent No. 1,984,134 valid and infringed by the defendant. The patent, entitled "Structural Member," applied for January 6, 1934, by Fred Himmel and Isidore Himmel, was issued December 11, 1934, and later assigned by the patentees to the instant plaintiff corporation.

Claim 7 is the only one involved in suit. The defenses are non-invention, non-infringement, invalidity of patent for failure to disclaim Claim 5, and that the claim in suit is invalid for lack of foundation in its specification and the lack of any oath to support it. After a careful study of the record we are convinced that the defense of non-invention must be sustained. It will therefore be unnecessary to consider the other defenses. The term "structural member" as used in connection with the patent, refers to a two-ply or laminated metal molding or edge-piece comprising an outer surface of thin, stainless sheet steel. It is used principally for supporting and ornamental purposes as the edgings or trimmings on running boards, hoods and bodies of automobiles, refrigerators, stoves, tables and the like. It is also used as a molding for supporting and holding plate glass windows in store fronts.

The specification filed in connection with the patent application relates in substance that the burnishing power or energy applied to the surface of solid, stainless steel develops heat on the surface which is not readily dissipated because of its low heat-conductivity, and that this heat produces waves and buckles in the stainless steel, thus damaging the finished product. While the patentees state they have other objects in view, the sole object stated is:

"It is an object of this invention, therefore, to overcome the foregoing described disadvantages of an all-stainless steel construction. We have found that this can be accomplished by forming each of such structural members of an outer surface member of stainless steel and a backing member of relatively-higher heat-conductivity metal."

There follows a description of one of the ways of carrying out the invention. Briefly, it describes a "structural member" such as a molding or bar with an outer surface member of stainless steel, and an inner or backing member of a metal or alloy having relatively-higher heat-conductivity than the outer member, such as aluminum, copper, bronze, brass or other metal suitable for the purpose. It is pointed out that the structural member illustrated in the drawing shown in connection with the patent has an outer surface member about one-fourth as thick as the inner backing member, their thickness being, respectively about .08" and .032". It is stated that the structural member may be made in various ways, but the one preferred is the simultaneously rolling or pressing the two strips to the desired shape in contact with each other; that it is preferred the outer member be of greater width than the inner member so that the edges of the former may be folded over the edges of the latter, thus serving as a fastening means for the two members and dispensing with the necessity of soldering or welding. It is further pointed out that the pressure of the burnishing wheel used in the burnishing or polishing of the outer member brings the members into intimate contact, thereby affording good heat-conducting means. Thus, the inner member conducts the heat away from the outer member, permitting a rapid burnishing process without burning or causing the outer member to buckle. It is again pointed out that the invention may be carried out in specific ways other than the one described, and that the latter is illustrative and not restrictive.

Originally seven claims were filed, all rejected by the Examiner in view of certain cited prior art patents. The claims were amended and again rejected for the same reason. Subsequently, they were again amended and allowed. Of those allowed, six were product claims and one a method or process claim. The latter — the only one involved in the instant suit, first making its appearance in the Patent Office on August 18, 1934 — is set forth in a footnote.¹

Thus the method claimed consists mainly of two elements, (1) simultaneously pressing together to desired shape an outer member of stainless steel and an inner backing member of higher heat conductivity and folding the side edges of the outer member over the edges of the backing member; and (2) burnishing the stainless steel veneer with a burnishing wheel under sufficient pressure to press the outer and inner member together, whereby the inner member dissipates the heat generated by the burnishing, thereby preventing discoloration of the stainless steel veneer strip.

In support of its defense of non-invention, defendant relies upon a prior public use by the Brasco Manufacturing Company, as well as by the plaintiff itself, and also on certain prior art patents.

At the outset it is argued by the plaintiff that we are bound by the facts as found by the District Court in conformity with Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. This rule has often been construed and there is no occasion to further discuss it. We are of the opinion that it carries little, if any, weight in the instant matter for the reasons (1) the findings relied upon appear to be conclusions of law rather than findings of fact, and (2) substantially all the testimony in the case was taken by deposition and under those circumstances, the court below was in no better position to judge of the credibility and the weight to be given to the witnesses than this court.

It would unduly prolong this opinion to discuss in detail the findings upon which plaintiff so strongly relies. We shall refer to one which we think is typical and which was made in connection with the Brasco prior use. The court found:

"Whatever pertinency the alleged prior use by the Brasco Manufacturing Company of Harvey, Illinois, the alleged prior public use by the plaintiff more than two years prior to the date of the application for the patent in suit; and all other prior use defenses set up by the defendant herein have to the patent in suit, relate alone to the product or article claims of said patent in suit that are not in issue herein and fail to show any prior use by said, the Brasco Manufacturing Company, or prior public use by the plaintiff itself, or by any other, of the method disclosed in said patent in suit and claimed in Claim 7 thereof, the only claim at issue in this action."

Thus, the testimony regarding this prior use was discarded by the court on the theory that it related only to the product claims which were not in suit, and not to the method claim involved. What reason the court had for reaching such a conclusion we are not advised, but, at any rate, we do not regard it as a finding of fact within the purview of Rule 52(a). The answer to the complaint specifically alleged the Brasco prior use as a defense, not only to the product claims, but also to Claim 7. The court, in reaching its conclusion in this respect, evidently relied upon plaintiff's argument that counsel for the defendant admitted at the hearing that the depositions concerning the Brasco prior use were not pertinent to Claim 7. We are of the view that the language used by counsel is not susceptible of such a construction. Suit was brought upon Claim 5, a product claim, in addition to the one now in suit. Defendant caused depositions to be taken regarding the Brasco prior use. At the commencement of the trial, plaintiff stated that it would rely solely on Claim 7. Defendant insisted that inasmuch as it had taken its depositions as to Claim 5, that that claim should be kept in issue and its validity determined. The court thought, and properly so we think, that it was without authority to require plaintiff to proceed in this manner, and consequently the case was tried and decided solely as to Claim 7. The fact that the defendant, in taking depositions, had in mind and directed its efforts chiefly at the product claim, does not, in our opinion, preclude it from relying upon such testimony in defense of the method claim in suit, provided, of course, the testimony discloses the method employed by Brasco. While the testimony describes the Brasco product which it is contended invalidates Claim 5, the product claim, the testimony also discloses the method by which Brasco's product was manufactured. As stated, this prior use was pleaded as a defense to all claims. The testimony concerning it is in the record. We know of no reason why that part of the testimony relevant to the method employed by Brasco should not be considered, nor why defendant is precluded from relying upon it as a defense to the method claim in suit.

It is not questioned by the plaintiff but that the Brasco Company in 1931, manufactured for the Vitrolite Company a structural member of laminated stainless steel and mild steel. The first order was placed in January of that year. This order specified an outer layer of Monel metal.

A second order was placed on April 27, 1931, for 20,000 feet of molding for table tops, using a rolled steel backing member and a stainless steel outer layer, which was manufactured and shipped in May, 1931. The same...