Laitram Corporation v. Deepsouth Packing Co., Inc., 28286.

CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)
Citation443 F.2d 928
Docket NumberNo. 28286.,28286.
PartiesThe LAITRAM CORPORATION, Plaintiff-Appellee, v. DEEPSOUTH PACKING CO., Inc., Defendant-Appellant.
Decision Date26 May 1971

COPYRIGHT MATERIAL OMITTED

C. Emmett Pugh, New Orleans, La., for appellant.

Louis B. Claverie, New Orleans, La., Guy W. Shoup, New York City, Phelps, Dunbar, Marks, Claverie & Sims, New Orleans, La., for appellee.

Before JOHN R. BROWN, Chief Judge, and GOLDBERG and CLARK, Circuit Judges.

CLARK, Circuit Judge:

This patent appeal does not present purely legal questions as the appellant's attorney urges. The issues are deeply steeped in fact findings and conclusions of the trial court. This court no more retries the facts in patent cases than it does any other class of matters. Hughes Tool Co. v. Varel Manufacturing Co., 336 F.2d 61 (5th Cir. 1964). In the almost two-year period between mid-1967 and 1969 when this case was pending in the district court, the parties compiled two volumes of pleadings, 11 volumes of trial and hearing transcript, a book of written and photographic exhibits, numerous physical exhibits and over 500 pages of briefs and memoranda. In addition to this welter of material, the conscientious trial judge viewed motion pictures of the subject machinery in operation and personally witnessed actual on-site demonstrations of both the patented and allegedly infringing machinery in actual commercial establishment operation and in the form of reconstructed replicas. To record his endeavors and determinations, he filed a 30-page finding of fact and prepared and published a detailed opinion discussing the prior litigation history of these parties and dealing in depth with each of the claims raised. See 301 F.Supp. 1037 (1969). The three judges on this appellate panel have reviewed such of this material from the trial court record as has been called to our attention, together with over 300 pages of briefs filed here, and we have listened to full oral arguments. After testing every action of the trial judge which appellant assigns as error, we find no merit in the appeal and affirm the judgment entered below.

Since the district judge has published an elaborate opinion which, with its accompanying drawings and photographs, will provide any interested reader with full information as to the most intricate function of the machinery involved, it is entirely unnecessary for us to reiterate the facts in any detail. It is sufficient for an understanding of our discussion to give the following summary. The assignors of Plaintiff-Appellee, The Laitram Corporation (Laitram), obtained two United States patents covering machinery designed to remove the veins from the back of previously peeled shrimp meats on a high volume, low labor basis. Viewed from the standpoint of the product processed — the shrimp meats — the physical function of the patented machinery is this. The peeled shrimp meats are delivered to the top of an inclined trough, then, with the aid of lubricating water, gravity and a physical phenomenon first noticed by these inventors cause the meats to slide back first through a series of knives positioned in a herringbone pattern down the length of the trough, in the course of which zig zag motions the backs of the shrimp meats strike again and again against sharp knives which slit the back open and expose the vein. The sloshing water also acts to wash loose some, but less than a commercially acceptable number, of the veins during the course of this journey. At the bottom of the trough the meats fall into a tank containing running water and a turning drum constructed of punched metal, having an inside surface composed of numerous projections similar to fingernails which catch and remove the remaining veins while the running water moves the meats along the length of the drum to the point of discharge. This machinery is covered by two separate patents. Patent #2,694,218 (218) covers the inclined trough and knife portion of the machinery, while patent #2,825,927 (927) covers the punched metal drum apparatus.

The Defendant-Appellant, Deepsouth Packing Company, Inc. (Deepsouth), has manufactured competing devices which perform the identical function. Deepsouth's watered trough has its knives in straight lines running the length of the trough and the shrimp meats are brought into contact with the knives by rocking the entire trough back and forth so that the shrimp follow a substantially similar herringbone pattern as they descend the trough, striking first one knife then another; at the bottom of the trough the shrimp are washed into contact with an endless belt constructed of the same punched metal material as Laitram's drum, by a system of water jets, developed and patented by Deepsouth, which strike the shrimp meats and wash the veins from most of them. This punched metal belt picks up the shrimp meats and deveins the remainder of them as they are moved to the end of the belt.

The trial court found claims 1 and 3 of the 218 patent to be valid and infringed by the machinery marketed by Deepsouth, under the doctrine of equivalents.1 However, the court concluded that claim 1 of this patent was unenforceable as to Deepsouth because of file wrapper estoppel. The remaining claims of 218 were found not to be infringed by Deepsouth's machinery either literally or by their equivalence. With regard to the 927 patent, the court found claim 1 to be valid and infringed,2 while finding the remaining claims asserted to be infringed were overbroad and indefinite. The court refused to apply the negative doctrine of equivalents to free Deepsouth from liability for infringing 927.

On this appeal Deepsouth challenges the court's findings as to the 218 patent, claiming: (a) a total lack of equivalence, (b) file wrapper estoppel should have been applied to preclude claim 3 in the same manner it was to bar claim 1, (c) claim 3 was anticipated by a prior patent — McKinstry (#2,649,980), (d) claim 3 was fatally broad and indefinite, (e) laches and estoppel prevented any claim of infringement, (f) the court erred in barring Deepsouth from introducing two pieces of documentary evidence which disclosed Laitram's knowledge of Deepsouth's early deveiner machinery activities.

As to infringement of the 927 patent, Deepsouth asserts that claim 1 is invalid (a) for overbreadth and indefiniteness; (b) if not overbroad, because of anticipation by the prior patents of Miller (#2,637,064) and White (#71,434); (c) because of obviousness in view of White, in combination with patents of Macklett (#565,999) or Kell (#1,028,736); and (d) because the court failed to apply the negative doctrine of equivalents.

In determining whether the trial court was correct in holding that Laitram's patents are valid and describe what Deepsouth's machinery accomplishes, we must consider the doctrines of obviousness, anticipation and equivalence.

In determining that Laitram's patents were novel, useful and not obvious, the trial court correctly applied the standard of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), as it was later stressed in Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), when it determined the facts which composed the scope and content of prior art and the differences between the prior art and the claims at issue, then made the mixed factual-legal determination that Laitram's improvement was not obvious to one possessing the level of ordinary skill in that art. Swofford v. B & W, Inc., 395 F.2d 362 (5th Cir.1968); Deere & Company v. Hesston Corp., 440 F.2d 904 (5th Cir.1971); cf. Stamicarbon N.V. v. Escambia Chemical Corp., 430 F.2d 920 (5th Cir.1970), and Inject-O-Meter Manufacturing Co., Inc. v. North Plains Fertilizer and Chemical, Inc., 439 F.2d 1138 (5th Cir.1970). See also R. Sherman, Obviousness: A Question of Law or Fact? 51 Journal of the Patent Office Society 547 (1969).

Anticipation by prior art structures is largely a question of fact in any case and this is uniquely so in the case at bar. The district court's findings on this facet of the case were made without error in legal principle and are to be tested by the plainly erroneous concept of Fed.R.Civ.P. 52(a). Hughes Tool Co. v. Ingersoll-Rand Co., 437 F.2d 1106 (5th Cir.1971). Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F. 2d 539 (5th Cir.1970).

When deciding whether equivalence exists in an allegedly infringing device, Graver Tank & Manufacturing Co. v. Linde Air Products Co. (on reh.) 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950) teaches that a court must not subordinate form to substance. If two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same even though they differ in name, form or shape. What constitutes equivalency is ordinarily to be decided by the trial court against the context of the patent, the prior art and the particular circumstances of the case, giving consideration to the purposes, quality and function of the patented device. Determining whether the Laitram and the Deepsouth machinery were equivalents entails predominantly determinations of fact requiring the balancing of credibility, persuasiveness and weight of evidence; and the trial court's decision here for review was largely based on its findings as to these criteria. Therefore, under the general principles of appellate review which are equally applicable to patent cases, it should not be disturbed unless it is clearly erroneous. Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., supra; V & S Ice Machine Company, Inc. v. Eastex Poultry Company, Inc., 437 F.2d 422 (5th Cir.1971); 5 J. Moore, Federal Practice ¶ 52.052 at 2697 (2d ed. 1969).

Considering the legal standards which are to be applied in such cases, we hold in sum that the trial court acted correctly when it refused to be led into such a technical...

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