Paper Converting Machine Co. v. FMC Corporation

• Citation: 409 F.2d 344
• Decision Date: 12 March 1969
• Docket Number: No. 16584.,16584.
• Parties: PAPER CONVERTING MACHINE CO., Inc., Plaintiff-Appellee, v. F M C CORPORATION, Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

409 F.2d 344 (1969)

PAPER CONVERTING MACHINE CO., Inc., Plaintiff-Appellee, v. F M C CORPORATION, Defendant-Appellant.

No. 16584.

United States Court of Appeals Seventh Circuit.

March 12, 1969.

Elwin A. Andrus, Milwaukee, Wis., Charles F. Meroni, Sr., Charles F. Meroni, Jr., Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., for defendant-appellant.

Horace Dawson, Jerome F. Fallon, Chicago, Ill., Joseph P. House, Jr., Milwaukee, Wis., for plaintiff-appellee.

Before MAJOR, Senior Circuit Judge, and KILEY and FAIRCHILD, Circuit Judges.

MAJOR, Senior Circuit Judge.

On July 24, 1959, this action was commenced by Paper Converting Machine Co., Inc., alleging that Hudson-Sharp Machine Company was infringing United States Letters Patent No. 2,870,840, issued to Edwin M. Kwitek, vice president of Paper Converting Machine Co., Inc., to whom the patent was later assigned. Application for the patent, entitled "Web Cutting Apparatus," was made May 16, 1957, and the patent was issued January 27, 1959.

The defendant answered the complaint, denied infringement, alleged invalidity and invoked a defense of file wrapper estoppel. The original defendant was merged with Food Machinery and Chemical Corporation (FMC), the instant defendant.

The case was tried by Judge Robert E. Tehan, and the proceedings extended over a period of some six years. During that time numerous discoveries were sought and obtained by the respective parties, interrogatories were proposed and answered, four pre-trial conferences were held, a three-week trial was had with a full day devoted to oral argument, and four post-trial briefs were submitted.

The court, on June 5, 1967, rendered its opinion, in which it decided the issue of infringement in favor of plaintiff and rejected defendant's defense of file wrapper estoppel. Paper Converting Machine Co., Inc. v. FMC Corporation, 274 F.Supp. 372.¹ Consistent with the opinion, findings of fact and conclusions of law were prepared by counsel for plaintiff, submitted to opposing counsel as to form and, with slight changes, adopted by the court. The court's findings are forty-eight in number and cover twenty pages of the appendix. The court concluded that defendant's perforators infringed claims 1,² 2, 3, 4, 8 and 9 (those involved in the suit):

"2. * * * because the machines embody the construction defined by each claim and operate in the same fashion to produce the same advantages. In determining whether a machine infringes, similarities or differences are to be determined, not by the name of things, but in the light of what they do. Union Paper Bag Machinery Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1897); Nordberg Mfg. Co. v. Woolery Machine Co., 79 F.2d 685, 692 (7th Cir. 1935).

"3. Where the accused machine falls clearly within the claim, infringement is made out, and that is the end of it. Graver Tank Co. v. Linde Air Products Co., 339 U.S. 605, 607 70 S.Ct. 854, 94 L.Ed. 1097 (1949). File wrapper estoppel is not available as a defense in such situations since the patentee here is not attempting to recapture what was abandoned before the Patent Office. Weaver Mfg. Co. v. Bear Mfg. Co., 109 F.2d 112, 115 (7th Cir.1940).

"4. The Court concludes that as a matter of law, the requisite invention was present in the Kwitek patent, and that the patent is valid. 35 U.S.C. 101-103; Graham v. John Deere Co. of Kansas City 383 U.S. 1 86 S.Ct. 684, 15 L.Ed.2d 545 (1960). Copying reinforces our conclusion of validity. Charles Peckett Peckat Mfg. Co. v. Jacobs, 178 F.2d 794, 801 (7th Cir. 1949); Bryan v. Sid W. Richardson, Inc., 254 F.2d 191, 196 (5th Cir. 1958)."

The court in its findings summarized the invention as follows:

"The patent thus describes a perforating structure which has one rotating roll, the bedroll, around which the web is partially wrapped, equipped with thin, flexible blades. These blades are rigidly supported along one edge. Further, these bedroll blades during operation contact skewed stationary blades and while being bent into associated recesses, transversely perforate the web. The stationary blades are also described in the claims as rigidly mounted or supported in a blade-supporting block or knife holder, which block or knife holder does not move or rotate during perforation. Thus, both blades being rigidly supported, one must bend to overcome the interference."

The court found (finding 29) that defendant on September 17, 1960, in response to requests for admissions of fact, "admitted that all elements of claim 1 were present in defendant's machine with the exceptions that the anvil blades were (1) stationary and (2) rigidly supported."

Defendant on brief here states the contested issues thus:

"1. Did the Trial Court err in failing to interpret the claims in the light of the actual cutter shown in the patent and as required by the crowded prior art and the patent file history; and, instead, in stretching the claim language in an unwarranted manner to include Defendant\'s different cutter?

"2. Did the Trial Court, here, err in its holding of infringement without any determination of what the actual claimed invention was and whether it satisfied the required tests to be a patentable invention?"

Defendant in its summary of arguments states:

"The six patent claims in suit are each directed to a web cutting apparatus having relatively movable rotary and stationary intersecting blades; and these claims, after cancellation of some twenty-seven claims over prior patents, were specifically restricted by Kwitek to the blades both being rigidly supported so as to obtain their allowance (AII 1453-1455). The examiner in rejecting claims, that were later cancelled said: `These claims do not define both the stationary and rotatable blades as being rigidly supported (AII 1453).\' Kwitek immediately thereafter responded by cancelling all the claims and presenting claims that became patented claims and stated: `It is believed that the claims as now presented also include all the suggestions made in the last Office letter.\'"

Defendant further argues:

"As was found by the Patent Office and acceded to by Plaintiff in the cancellation of numerous and repeatedly rejected claims (such as claim 28, AII 1440), the basic combination of intersecting rotating yieldable and non-rotating or stationary blades was long old in the art and, hence unpatentable to Plaintiff. It was only after such rejections and in response to the Examiner\'s requirement to limit the claims to both or all blades being `rigidly supported\' (AII 1453), as shown by Kwitek that claims so limited were presented and allowed (AII 1461).

"The broadened interpretation of its claims, successfully urged by Plaintiff in the trial, and in its contention that Defendant\'s spring supported anvil blade structure is an infringement, results in such claims being unpatentable and invalid under both Section 103 and Section 112."

Based on defendant's trial theory, the court found (finding 30):

"The only difference between the machine disclosed in the patent and the accused structures relied upon by the defendant as avoiding infringement has been succinctly described by the defendant as follows:

`In the patented structure, the anvil blades are solidly clamped against the beam portion of the machine frame, whereas in the accused structure a transverse shaft pivotally supports the blades through an anvil casting carried by the shaft, a spring being interposed between the anvil and the frame beam.\' (Emphasis ours.)

It is the position of the defendant that since springs are interposed between the casting holding the stationary blades and the beam, those blades are not rigidly supported or mounted. Thus, the sole question here presented is whether the stationary or anvil blades in the accused machines are rigidly mounted or supported as required by the claims in issue. Defendant has not urged any further distinction based on the word `stationary.\' Defendant\'s own instruction sheets (PX 49) characterize the anvil blades as stationary."

The case is unusual in that of the voluminous findings made by the trial court, only a few are criticized as not being substantially supported; in fact, only six are mentioned in defendant's brief. Defendant's criticism in the main is directed at what the court failed to find rather than at what it did. Particular criticism is made of the court's failure to make findings relating to the prior art so as to show the scope of the claims which it is asserted is a prerequisite in the determination of infringement.

The most controversial finding is as follows (finding 46):

"During the trial, the scope and content of the prior art was brought to the Court\'s attention even though invalidity of the patent has not been urged. During oral argument, after it had been pointed out to the Court that the last words in defendant\'s Second Answering Brief were `Validity of the Kwitek patent has been disposed of as an issue here and the owners of the patent possess a legal monopoly\', the Court asked counsel for defendant whether the Court had to go into validity. The answer was unequivocal, `No, sir, you do not.\' (Transcript oral argument page 66). This was followed by the Court\'s question, `We are down to one issue then, infringement?\'. To this, counsel for defendant replied, `Correct\'."

Defendant attacks this finding as incomplete. It argues in effect that it made only a conditional concession of validity, dependent upon the court's decision on infringement. In other words, if the court held non-infringement, validity was conceded; if it held infringement, the concession was not applicable. While such a position might be deduced from counsel's statement made at the beginning of the trial, it appears to have been abandoned, as shown by a colloquy which took place at the closing oral argument.³

Early in the trial, defendant's counsel stated to the court, "As you know, counsel plaintiff's counsel in his opening...