Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co.

Decision Date21 March 1984
Docket NumberNo. 83-1178,83-1178
Citation730 F.2d 1452
PartiesLINDEMANN MASCHINENFABRIK GMBH, Appellant, v. AMERICAN HOIST AND DERRICK COMPANY, Harris Press and Shear Division, Commercial Metals Company, Appellees.
CourtU.S. Court of Appeals — Federal Circuit

David Toren, New York City, argued, for appellant. With him on brief was Jules Goldberg, New York City.

Michael E. Macklin, Houston, Tex., argued, for appellees. With him on brief was Edward W. Goldstein, Houston, Tex.

Before MARKEY, Chief Judge, COWEN, Senior Circuit Judge, and BENNETT, Circuit Judge.

MARKEY, Chief Judge.

Appeal from the May 23, 1983, judgment of the District Court for the Southern District of Texas, sitting without a jury and holding invalid claims 1, 2, and 4 of appellant's (Lindemann's) U.S. Patent No. 3,945,315 issued March 23, 1976 and entitled "Hydraulic Scrap Shearing Machine". We reverse and remand.

The Patent

United States Patent No. 3,945,315 ('315) issued March 23, 1976 on an application filed April 16, 1975. Peter Dahlem and Hubert Milles are named co-inventors and Lindemann is listed as the assignee. The '315 patent claims a priority filing date, under 35 U.S.C. Sec. 119, of May 13, 1974, based on West German application 2423003.

Hydraulic scrap shears, the subject matter of the '315 patent, are a principal tool of the scrap metal industry. The shears are large, often weighing several hundred tons, and are designed to cut scrap metal into smaller, uniform pieces for recycling.

There are two basic types of metal processed in the shears: "peddler's scrap" and "rigidly massive scrap".

Peddler's scrap consists of light to medium gauge metal objects, such as light tubing, automobile bodies, and window frames. It makes up a large percentage of the available scrap and is comparatively easy to process.

Rigidly massive scrap consists of heavy gauge metal objects, such as boilers, oil tanks, and railroad cars. Because of thickness or internal reinforcements, massive scrap objects are difficult to process. Traditionally, massive scrap had been processed in very large, tremendously powerful shears, or had been pretreated, e.g., with oxyacetylene torches, to reduce its size or weaken its internal reinforcements. Either approach was costly and time-consuming. Many scrap dealers handled peddler's scrap exclusively.

The Invention

The '315 patent contains five claims. Claim 1, the only independent claim, is written in Jepson form:

1. In a hydraulic scrap-shearing machine comprising an open feed channel having two opposing side walls, scrap shears at one end of said feed channel and having a mouth narrower than the normal width of said feed channel between said side walls, hydraulic means for moving at least one of said side walls towards the other of said side walls whereby scrap placed in said feed channel can be squashed to a final width no greater than the width of said mouth of said scrap shears, and a feeder ram for pushing scrap along said feed channel into said mouth of said scrap shears, the improvement consisting of said movable one of said side walls being divided into two longitudinal portions of different lengths, and said hydraulic means comprising a main hydraulic ram having a working face forming the longer portion of said movable side wall, and an auxiliary hydraulic ram having a working face forming the shorter portion of said movable side wall just upstream of said mouth of said scrap shears, said auxiliary hydraulic ram being capable of operation independently of said main hydraulic ram.

The claimed structure is shown in Figure 2 of the '315 patent:


In operation, the combined rams (17, 19) advance into the feed channel (9), crushing and compacting the scrap (12) against the other, non-movable sidewall (14). With peddler's scrap, the two rams move the entire distance together. However, when the channel contains rigidly massive scrap, such as shown at (12), the two rams are quickly brought to a standstill by the scrap's resistence to crushing. The auxiliary ram (19) is then moved forward independently of the main ram (17). The auxiliary ram, having a smaller working surface than the combined rams, is capable of applying a greater crushing force to the scrap. The auxiliary ram cracks and buckles the scrap directly in front of it to crush the leading end of the scrap so it can be pushed through the mouth of the shears. That action also propagates that effect to an adjacent area (H) of the scrap. The structural integrity of the scrap is thus overcome by the auxiliary ram, thereby reducing the resistance of the portion of the scrap in contact with the main ram, allowing both rams to continue forward to crush the scrap to a width less than that of the shear mouth. The feeder ram (11) then pushes the crushed scrap through the mouth of the shear and under the shear blades (at 5) and clamp (at 6). The clamp holds the crushed scrap in place during cutting.

The claimed invention allows one machine of moderate size to process both peddler's and rigidly massive scrap, and to do so quickly, inexpensively, and without the need for pre-treating massive scrap. Unchallenged testimony described crushing accomplished in minutes of scrap that would have required hours to crush in earlier larger machines and that could not have been crushed without pretreatment.

District Court Proceedings

On October 5, 1980, Lindemann sued appellees (collectively "Amhoist") for infringement of claims 1, 2, and 4 of the '315 patent. Amhoist asserted non-infringement and counterclaimed for a declaratory judgment that the '315 patent is invalid.

A three day trial was conducted on June 21-23, 1982. On May 23, 1983, the district court entered FINDINGS OF FACT AND CONCLUSIONS OF LAW, the introduction of which stated:

After hearing all the evidence the Court concludes that the patent is invalid. Plaintiff simply incorporated two admittedly well-known metal compression features in the same machine and sought to gain a monopoly in the use of knowledge that had previously existed in the public domain. The Court finds and concludes that the claimed invention of the Plaintiff does not meet the statutory or constitutional requirements established for patent protection. Specifically, the machine was an obvious aggregation of prior art which produced no new or synergistic result. It failed materially to promote the progress of science and the useful arts.

The district court entered 60 findings and 20 conclusions indicating its view that the '315 patent is invalid under 35 U.S.C. Sec. 102(b), 35 U.S.C. Sec. 103, and 35 U.S.C. Sec. 112.

On May 24, 1983 the district court entered judgment declaring the '315 patent invalid. The judgment is silent respecting infringement, though the district court had stated from the bench at end of trial:

Well, if the '315 patent is valid, I think the proof is clear that it has been infringed and it is pretty clear that it was done with knowledge, conscious knowledge to the point of willful infringement. 1


I. Whether the district court erred in finding the inventions set forth in claims 1, 2, and 4 anticipated by U.S. Patent 3,763,770 ('770) under 35 U.S.C. Sec. 102(b).

II. Whether the district court erred in concluding that the inventions set forth in claims 1, 2, and 4 would have been obvious under 35 U.S.C. Sec. 103.

III. Whether the district court erred in concluding that the '315 patent specification was non-enabling under 35 U.S.C. Sec. 112.

IV. Whether this court on remand should order entry of a judgment that claims 1, 2, and 4 were infringed by Amhoist.


Of the district court's 60 findings, 57 were those submitted by Amhoist before trial. The source of findings does not render the "clearly erroneous" standard of Fed.R.Civ.P. 52(a) any less applicable or binding. Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, n. 4 (Fed.Cir.1984). In adhering firmly to that rule, however, an apparent absence of personal attention need not be disregarded. See Amstar Corporation v. Domino's Pizza, Inc., 615 F.2d 252, 258, 205 USPQ 969, 974 (5th Cir.1980), Wilson v. Thompson, 593 F.2d 1375, 1384 n. 16 (5th Cir.1979). Under such circumstances, one court has indicated that strict scrutiny is appropriate. See Smith International, Inc. v. Hughes Tool Co., 664 F.2d 1373, 215 USPQ 592 (9th Cir.1982). Where, as here, the adopted findings are those proposed by a party before trial, a greater chance is created that those findings may be clearly erroneous. Indeed, the present findings include some for which no supporting evidence was submitted at trial.

Having written them, Amhoist argues strenuously for retention of the findings behind the shield of the "clearly erroneous" rule, and repeatedly reminds us of our duty to review the findings favorably and of the burden resting on the appellant. However salutary, the rules governing review do not envision an appellate court shirking its duty to reverse an appealed judgment that is clearly based on legal error and unsupported by evidence in the record.

We review judgments, not the rhetoric in opinions. Nonetheless, the language in an opinion, or in a set of findings and conclusions, may indicate that numerous harmful errors of law produced an erroneous conclusion, and that the decisional approach of the district court led to a judgment not supported in law by the facts of record. That happened here.

I. Anticipation

Anticipation is a factual determination, reviewable under the "clearly erroneous" standard. Carman Industries Inc. v. Wahl and Vibra Screw Inc., 724 F.2d 932 (Fed.Cir.1983), Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 218 USPQ 781 (Fed.Cir.1983), F.R.C.P. 52(a). "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...

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