MB Skinner Company v. Continental Industries, Inc.

• Decision Date: 02 July 1965
• Docket Number: No. 7739.,7739.
• Citation: 346 F.2d 170
• Parties: M. B. SKINNER COMPANY, a division of Textron, Inc., a Rhode Island corporation, Appellant, v. CONTINENTAL INDUSTRIES, INC., an Oklahoma Corporation, Appellee.
• Court: U.S. Court of Appeals — Tenth Circuit

346 F.2d 170 (1965)

M. B. SKINNER COMPANY, a division of Textron, Inc., a Rhode Island corporation, Appellant, v. CONTINENTAL INDUSTRIES, INC., an Oklahoma Corporation, Appellee.

No. 7739.

United States Court of Appeals Tenth Circuit.

June 1, 1965.

Rehearing Denied July 2, 1965.

Charles J. Merriam, Chicago, Ill. (Eugene C. Knoblock, So. Bend, Ind., and Conner, Winters, Randolph & Ballaine, Tulsa, Okl., Zarlengo, Zarlengo & Seavy, Denver, Colo., and Merriam, Smith & Marshall, Chicago, Ill., of counsel, were with him on the brief), for appellant.

Richard B. McDermott, Tulsa, Okl. (Paul H. Johnson and Boesche, McDermott & Eskridge and Head & Johnson, Tulsa, Okl., of counsel, were with him on the brief), for appellee.

Before MURRAH, Chief Judge, LEWIS, Circuit Judge, and DOYLE, District Judge.

LEWIS, Circuit Judge.

Appellant, M. B. Skinner Company, brought this action in the Northern District of Oklahoma against appellee Continental Industries, Inc., alleging infringement by Continental of appellant's patents 2,950,637 and 2,990,731, related to punching T-fittings primarily used for making service taps or connections to steel natural gas pipelines. Appellee denied infringement, claimed that the patents were invalid, and counterclaimed for a declaratory judgment to such effect. After a trial to the court, judgment favoring appellee on all issues was entered. Appellee's counsel thereafter prepared detailed findings of fact and conclusions of law, which the court adopted verbatim. From the judgment holding the patents invalid and not infringed appellant prosecutes this appeal.

Appellant's punching T-fitting, first embodied in its patent number 2,950,637, is designed to be secured at one end to the pipe to be tapped and to extend outward radially from the pipe. The punching element itself fits inside the T-fitting and has a threaded outer end and a punching tip at the inner end, with the threaded end fitting into the threaded interior of the T-fitting. Rotation of the punch causes it to advance at a rate determined by the thread pitch, and in so advancing it pushes the metal ahead of it, producing a metal coupon upon completion of the punch. The face of the punching tip is flat and oblique rather than being perpendicular to the axis of the punch. It is cut at a 15 degree angle, which was found to obtain the most efficient punching action.

The punch tip is smaller in diameter than the threaded part of the punching element. After the hole has been punched in the pipe, the tip is retracted by reverse threading to permit the gas to flow through the pipe hole. The threads on the opposite end of the fitting act as a seal against the escape of the gas from the pipe, leaving only the third member of the tee open for the passage of gas. The punch also has a tapered section between the tip and the threaded portion so that the flow of gas may be shut off by advancing the punch until the tapered portion is firmly seated in the hole; in this way the T-fitting may be used as a valve.

Appellant emphasizes the distinction between a punch and a drill. A punch such as appellant's involves the cold flow of metal and, like a paper punch, produces a coupon rather than shavings which would result from drilling. Punching which utilizes the cold flow of metals is a form of swaging. By punching, rather than drilling, appellant's T-fitting makes it possible to tap a pipe much faster than before and avoids the production of shavings, which are likely to cause trouble if they remain inside the pipe.

This first T-fitting was marketed by appellant in the first half of 1959 but was not entirely satisfactory. Because an oblique rather than perpendicular tip was used, the first contact made with the pipe by the tip was eccentric, rather than concentric, to the threaded portion of the punch. This caused the tip to wander somewhat from the axis of the punching element and sometimes to break. Also, on some occasions the coupon formed by the punching did not break entirely loose but remained hinged at the edge of the hole on the inside of the pipe, resulting in the possibility that it might subsequently swing back to obstruct the hole. Because of these shortcomings, appellant developed and marketed an improved punch, the subject of patent number 2,990,731, which had the same structure but a different punching tip. The tip on this punch is formed of two intersecting planes, with a central hole positioned axially of the punching element. The central hole and the two apexes, formed by the two points of intersection of the planes, keep the punch from wandering. The improved tip also solved the problem of the coupon not breaking completely loose from the inside wall of the pipe. This second punch accounts for the majority of appellant's sales and was found by the District Court to be "a useful device."

The accused punch marketed by appellee is similar in all respects to appellant's improved punch except that the tip is made up of three, rather than two, intersecting planes. There is no other important difference between the two punches. Both punches swage a hole in the pipe and both produce a coupon.

Preliminarily, appellant urges that our review of this case should be in the nature of a consideration de novo; that the findings of the district court should not receive the benefit of the clearly erroneous rule because such findings were prepared by counsel and adopted by the court without change; and further, that such findings were based in part upon the erroneous consideration of the testimony of a witness, a patent expert but not expert in the art, who was incompetent to testify but was allowed to testify to ultimate conclusions. We would consider such arguments to have merit only if the over-all record indicated an abandonment of the judicial process by delegation of the decision-making function to counsel and witness. Such is not this case, and although we do not commend the practice of the verbatim adoption of findings prepared by counsel,¹ such findings "are not to be rejected out-of-hand, and they will stand if supported by evidence." United States v. El Paso Natural Gas Co., 376 U.S. 651, at 656, 84 S.Ct. 1044 at 1047, 12 L.Ed.2d 12. Nor is it improper for the trier of the facts to consider the opinion evidence of an expert upon technical subjects, the value of such opinion being left to the sound discretion of the trial court in view of the qualifications of the expert. The judicial function requires an understanding of the case and the record here negatives an inference of inadequacy in such regard. See Lorenz v. General Steel Products Co., 5 Cir., 337 F.2d 726, 727 n. 3, and authorities there cited.

Although this case is presented with the complexity typical in patent controversies, the critical finding of the trial court is that appellant's claims are premised upon an old and exhausted combination, thus indicating a primary appellate inquiry into the issue of validity, see Sears, Roebuck & Co. v. Jones, 10 Cir., 308 F.2d 705, cert. denied, 371 U.S. 952, 83 S.Ct. 509, 9 L.Ed.2d 501, which is...