Hoge Warren Zimmermann Co. v. Nourse & Co.
Decision Date | 22 August 1961 |
Docket Number | 14214.,No. 14213,14213 |
Citation | 293 F.2d 779 |
Parties | HOGE WARREN ZIMMERMANN CO., Appellant, v. NOURSE & CO., and Carl C. Nourse, Appellees. NOURSE & CO., and Carl C. Nourse, Cross-Appellants, v. HOGE WARREN ZIMMERMANN CO., Cross-Appellee. |
Court | U.S. Court of Appeals — Sixth Circuit |
John Melville, Cincinnati, Ohio (Allen & Allen and Stanley H. Foster, Cincinnati, Ohio, on the brief), for Hoge Warren Zimmermann Co.
J. Warren Kinney, Jr., Cincinnati, Ohio (Edward J. Utz, Cincinnati, Ohio, on the brief), for Nourse.
Before MILLER, Chief Judge, WEICK, Circuit Judge and THORNTON, District Judge.
"We are bound in patent cases by fact findings of the trial court which are not clearly wrong." National Latex Products v. Sun Rubber Co., 6 Cir., 1959, 274 F.2d 224, 238. In applying this rule, in McAllister v. United States, 1954, 348 U.S. 19, 20, 75 S.Ct. 6, 8, 99 L.Ed. 20, the Supreme Court stated as follows:
"A finding is clearly erroneous when `although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed,\' * *"
In applying this test to the findings of fact of the District Court, we have made some observations which will be discussed below.
Discussion.
At the outset, the appellees present a Counter-Statement of Facts, giving as their reason that "the Statement of Facts presented in appellant's brief is misleading, incomplete, argumentative, in certain instances unsupported by the record, and in other instances clearly erroneous." From our examination of the two volumes of the Joint Appendix, and of the brief and reply brief of the appellant we are impressed that appellees were not without good reason in having submitted their Counter-Statement of Facts.
Patent No. 2,538,891 was issued to the appellant on January 23, 1951 and contained apparatus claims only; this patent is not in suit. Patent No. 2,625,381 was issued on January 13, 1953 and contains process claims only; this is the only patent here in suit, and typical of the claims in suit is claim 2, which is as follows:
"A process for continuously preparing a gypsum slurry for use, which includes the steps of metering dry calcined gypsum, metering water, bringing said metered gypsum and water into intimate contact and continuously and violently agitating them to form a slurry having a creamy, uniform texture, and to entrain air therein, passing said slurry promptly into a closed system, and subjecting said slurry, continuously throughout said closed system, to a mixing action for a period of time which closely approaches but does not exceed the critical conversion point of the slurry, and discharging said slurry from said closed system for immediate use." Ptf.\'s Exhibit 38, Joint Appendix, p. 711a.
The brief of the appellant, at page 12, is authority for the following concession:
As support for appellant's contention that the claims in suit were supported by the disclosures of the parent application, and thus entitled to the date of the first or parent application and not barred by public use, appellant presented the testimony of Mr. Ralph Grim as an expert. In appellant's brief appellant describes Mr. Grim variously as follows:
In his testimony Mr. Grim identified himself as an educator of many years standing and, at the time of the trial, as research professor of Geology at the University of Illinois, with a special field of knowledge in the investigation of the occurrence and the composition and the atomic structure of minerals; he also testified that he had been retained as an expert in the "field of gypsum" on two occasions, by the United States Gypsum Company and in the instant case. When asked by counsel for the appellant "Professor Grim, you have read the '891 patent and understand it and you have read the '381 patent and understand it" he replied "I have read them and I think I understand them." On cross-examination Mr. Grim admitted that he had appeared in patent cases but that he did not claim to be a patent expert and, in addition, that he had not studied the proceedings involved in this litigation before the Patent Office.
The District Court found as a fact that the plaintiff's patent expert was not only wholly unfamiliar with the proceedings before the Patent Office during the prosecution of the patent application which matured into patent No. 2,538,891 or patent No. 2,625,381, but that he frankly admitted that he did not claim to be a patent expert. In contrast to the foregoing, Mr. Kingsland testified that he had studied patent No. 2,538,891 and that he had also made a study of patent No. 2,625,381 and of the file wrappers of each. From this study he gave a lengthy and detailed account of what this examination and study meant to him as a person skilled in patent law and patent procedure. He concluded that a public use and sale of a process in November 1947 would be a statutory bar to the validity of each of the seven claims of the method patent here in suit (No. 2,625,381). He based this conclusion upon a summary of all of his investigation and testimony which was to the effect that all seven claims of the method patent here in suit contain limitations which are not disclosed in the earlier parent application. Mr. Kingsland testified that the 1948 patent application made no reference to any further processing after the initial mixing in the mixer; that the 1948 application made no reference to a critical conversion point nor that there is anything in the 1948 application that would give a definition for the term "critical time"; nor was there anything in the 1948 application with reference to mixing in the hose; nor was there any basis in the 1948 application for the expression "that after the prepared gypsum slurry has passed into a closed system that it is further treated for a period of time which closely approaches but does not exceed the critical conversion point of the slurry." There is additional testimony from witnesses from both sides of the litigation, and from exhibits, to the effect that the claims of the patent in suit are not supported by disclosures of the parent application (No. 2,538,891). The patent in suit, No. 2,625,381, issued in 1953 on a patent application filed October 18, 1950. In the first paragraph of this patent it is referred to as "a continuation-in-part of our copending application, Serial No. 9,435, filed February 19, 1948, now Patent No. 2,538,891, issued January 23, 1951." This 1948 application, as filed, contained both apparatus and process claims, and of these process claims No. 6 was considered by the inventors Hoge and Zimmermann as a basic process claim and reads as follows:
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