McCulloch Motors Corp. v. Oregon Saw Chain Corp.

• Decision Date: 05 August 1965
• Docket Number: No. 919-57.,919-57.
• Citation: 245 F. Supp. 851
• Court: U.S. District Court — Southern District of California
• Parties: McCULLOCH MOTORS CORPORATION, a corporation, Plaintiff, v. OREGON SAW CHAIN CORPORATION, a corporation, Defendant.

245 F. Supp. 851

McCULLOCH MOTORS CORPORATION, a corporation, Plaintiff, v. OREGON SAW CHAIN CORPORATION, a corporation, Defendant.

No. 919-57.

United States District Court S. D. California, Central Division.

July 30, 1963.

On Motion for New Trial August 5, 1965.

Whann & McManigal, Los Angeles, Cal., for plaintiffs.

Lyon & Lyon, Los Angeles, Cal., and Buckhorn, Blore, Klarquist & Sparkman, Portland, Or., for defendant.

HALL, District Judge.

This suit involves two Patents No. 2,622,636 (Hassler) and No. 2,508,784 (Cox), both concerned with chain saws.

A summary judgment was granted as to Patent No. 2,622,636 and an appeal taken, which so far as I can learn from the record presently before me is still pending. See 9 Cir., 323 F.2d 758

A motion for summary judgment has been made as to Patent No. 2,508,784, the Cox Patent, on the ground the patent is void under 35 U.S.C. 185, in that the applicant filed an application in Canada for the same patent without securing a license to do so, and that the retroactive license of the commissioner is invalid.

The court is indebted to counsel for their copious and thorough briefs.

The question to be resolved appears to be a limited one.

There is no dispute that the applicant filed in Canada without, or before the effective date of, a license issued under 35 U.S.C. 42(a) and 42(b) of the 1946 edition of U.S.C. which was then in effect: There is no dispute that the commissioner issued a retroactive license under the then effective 34 U.S.C. 106 (1946 Ed.) now 35 U.S.C. 184.

Neither party contends that the patent was detrimental to the security or interest of the United States under 35 U.S.C. 42 (1946 Ed.) now 35 U.S.C. 181. That being so the discretion of the commissioner, being specifically granted by both the 1946 and the 1952 Patent Acts when he finds inadvertence, is not to be disturbed, on this collateral attack.

The motion for summary judgment is denied.

ON MOTION FOR NEW TRIAL AND OBJECTIONS TO FINDINGS OF FACT, CONCLUSIONS OF LAW AND JUDGMENT (PATENT NO. 2508784)

Following a twelve-week trial and extended argument, the Court, on April 29, 1965, gave its oral opinion finding the defendant's Patent No. 2,508,784 valid and infringed by the plaintiff McCulloch and that the infringement was wilful.

Defendant Oregon submitted its proposed findings of fact and conclusions of law which were followed by McCulloch's motion for a new trial and objections to the findings of fact and conclusions of law.

Oregon makes the point that the motion for new trial is premature, contending that the findings of fact and conclusions of law should be signed and the judgment entered before a motion for new trial should be entertained. F.R. Civ.P. 59(b) provides that a motion for new trial "shall" be served not later than ten days after the entry of judgment. It is obvious that by the use of the words "shall" and "not later than" the ten days after entry of the judgment is an outside limit within which a motion can be made and not an inside limit. Especially is that so where, as here, the Court indicated in its oral opinion its conclusions to be incorporated in the findings of fact, conclusions of law and judgment, which opinion, of course, did not, and need not, descend to the particulars required in findings of fact, conclusions of law and judgment. The motion is timely. But in view of the fact that the motion for new trial and its supporting briefs and documents were made and filed after the findings of fact and conclusions of laws had been served, the losing party, in this case McCulloch, should, in good sense, be precluded from making another motion for new trial within the ten days after the findings of fact, conclusions of law and judgment are signed.

McCulloch's motion for a new trial asserts: (1) an insufficiency of the evidence to justify the decision of wilful infringement; (2) errors in law occurring at the trial in connection with the issue of wilful infringement. In support thereof it urges the following grounds:

(1) The Court erred as a matter of law in finding wilful infringement because McCulloch relied in good faith upon the opinions of competent counsel as to the validity and/or non-infringement of Patent No. 2,508,784 (hereinafter referred to as "Patent 784"); (2) The Court erred as a matter of law in excluding evidence of the intent and good faith of McCulloch in relying upon the opinions of competent counsel as to the invalidity and/or non-infringement of Patent 784 by excluding certain testimony of the witnesses John Ryde and Joseph Hegener because said testimony related to the belief of McCulloch in the invalidity and non-infringement of Patent 784; (3) The Court erred as a matter of law in disregarding the testimony of Henry V. Leavitt, in misconstruing the 1953 opinion of R. Welton Whann, and in ignoring Mr. Whann's 1956 opinion because in each instance the Court thereby committed a prejudicial and manifest error of fact which resulted in erroneous decisions both with respect to the validity of Patent 784 and with respect to the existence of wilful infringement; and (4) The Court erred as a matter of law in disregarding paragraphs VII, VIII and XVIII of the Settlement Agreement (Ex. TH) because under these provisions Omark was precluded as a matter of contract law from offering, using or relying upon the memoranda of Joseph Hegener (Exs. NB, NC and ND) to support a charge of wilful infringement.

Upon re-examination of the transcript and my notes, it is concluded that the testimony of Hegener and Ryde, which McCulloch in ground 2 claims was improperly excluded, was properly excluded.

The assertion in ground 3 that the court disregarded the testimony of Leavitt is not well taken. The Court did not disregard it; the Court simply found it to have no probative force in light of all the testimony and evidence in the case.

McCulloch relies generally, of course, on all of the pleadings, papers and exhibits on file herein, as well as the transcript of the proceedings at the trial, and (1) Memorandum of Points and Authorities filed concurrently, (2) a "Statement of Facts" filed concurrently, (3) Affidavit of R. Welton Whann, (4) Affidavit of Henry V. Leavitt, (5) particular volumes of the transcripts, and (6) certain specified exhibits.

Throughout the supporting Statements, Affidavits and Memoranda McCulloch's counsel resort to the all too common practice of claiming the Court "ignored" or "disregarded" certain evidence which counsel feel is favorable to their position. When a trial judge announces his decision on a trial consuming fifty days in which over a thousand exhibits were admitted and 5500 pages of transcript accumulated, the Court is hardly expected to write, or orally state, an analysis of each question and answer which has been given or each exhibit which has been produced throughout trial.

The long and short of the whole matter is that the Court did not ignore or disregard any of the evidence in the case but throughout the trial paid close attention to all the evidence, autoptic and auditory, and repeatedly interrupted witnesses in order that the Court may have fixed in its mind the precise testimony which the witness desired to give. During the course of the trial the Court observed the physical demonstrations of the parties, spent many weekends examining the physical exhibits (the chains, with a magnifying glass), and the documentary exhibits in the case, and concluded from the whole evidence, including the manner of the witnesses while on the stand, that it would be a miscarriage of justice to decide other than it did because: (1) the evidence preponderated so heavily in favor of the validity of the patent and its infringement; (2) such infringement was, and is, wilful, deliberate, intentional, purposeful, and with conscious knowledge that there was no clear anticipation of the patent in suit by any prior patent and that the patent in suit was being infringed "by various of the saw chains manufactured" by McCulloch; (3) from and after Oregon filed its suit in the United States District Court of Oregon on March 20, 1953 against McCulloch's distributors in Oregon, McCulloch did not evince good faith in its dealings with Oregon, but was guilty of bad faith in such dealings with Oregon; (4) neither the validity of the patent nor its infringement by McCulloch was open to an honest doubt by McCulloch.

This conclusion is fortified by some of the documents filed by McCulloch in support of its motion for new trial which were not introduced in evidence. These documents were filed in support of McCulloch's contention that the Court "ignored" the opinion of McCulloch's counsel of December 27, 1956 (Ex. 511), which McCulloch claims shows that defendant's counsel thought the patent in suit to be invalid and not infringed, and which McCulloch asserts it relied on in good faith. The documents submitted in support of their contention are the following: a letter dated May 31, 1950 from McCulloch's counsel to their corresponding counsel in Washington, D. C., requesting a validity investigation of the patent in suit; letter from the Washington counsel dated June 16, 1950 to McCulloch's local patent counsel which, inter alia, stated, "We have been unable to find a clear anticipation of the claims of the Cox patent. We have found a good many patents which are interesting but which do not meet the terms of the Cox claims. Some of these patents might be used in support of an argument that patentable invention is not disclosed in the Cox patent. Alternatively, these patents might be of assistance to your client in designing a satisfactory saw tooth to not infringe the Cox patent"; a letter of June 22, 1950 by McCulloch's local counsel transmitting the last above-mentioned letter to McCulloch Motors Corporation and stating, inter alia, "I have reviewed these patents and agree with the conclusions reached by our associates, namely, that there is nothing identical ...